West Case Update

Public Use of Invention Prior to Patent Filing Means No Patent Available

Description Appeals court held that when an inventor showed others how his invention worked, but did not impose an obligation of confidentiality, there was public use of the invention before the patent application was filed, which made patents he later received invalid.

Topic Intellectual Property

Key Words Patents; Validity; Public Use

C A S E S U M M A R Y

Facts Konrad was awarded three patents that concern how a computer user accesses and searches databases in remote computers. Konrad sued Netscape, Microsoft, AOL, and others for infringement. Defendants asserted that the patents were invalid because of public use. The district court agreed with that view and declared the patents invalid. Konrad appealed.

Decision
Affirmed. A patent is invalid if there is public use of the invention before the patent claim was filed. "Public use includes any use of the claimed invention by a person other than the inventor who is under no limitation, restriction or obligation of secrecy to the inventor." An inventor may test an invention in public without incurring the public use bar so long as there was an obligation of confidentiality imposed on persons who observed the test. Konrad's inventions were demonstrated to university computing personnel who had no knowledge of any requirement of confidentiality, so there was public use that made patents invalid.

Citation Netscape Communications v. Konrad, 295 F.3d 1315 (Fed. Cir., 2002)

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Public Use of Invention Prior to Patent Filing Means No Patent Available
Description	Appeals court held that when an inventor showed others how his invention worked, but did not impose an obligation of confidentiality, there was public use of the invention before the patent application was filed, which made patents he later received invalid.
Topic	Intellectual Property
Key Words	Patents; Validity; Public Use
C A S E S U M M A R Y
Facts	Konrad was awarded three patents that concern how a computer user accesses and searches databases in remote computers. Konrad sued Netscape, Microsoft, AOL, and others for infringement. Defendants asserted that the patents were invalid because of public use. The district court agreed with that view and declared the patents invalid. Konrad appealed.
Decision	Affirmed. A patent is invalid if there is public use of the invention before the patent claim was filed. "Public use includes any use of the claimed invention by a person other than the inventor who is under no limitation, restriction or obligation of secrecy to the inventor." An inventor may test an invention in public without incurring the public use bar so long as there was an obligation of confidentiality imposed on persons who observed the test. Konrad's inventions were demonstrated to university computing personnel who had no knowledge of any requirement of confidentiality, so there was public use that made patents invalid.
Citation	Netscape Communications v. Konrad, 295 F.3d 1315 (Fed. Cir., 2002)