Patent Law

You decide to patent your invention.

Just like the hypothetical court, the Federal Circuit Court of Appeals in Lough v. Brunswick Corp., considered whether an inventor's testing of an invention was a question of fact or a question of law. The Lough court held that determining an invention's use in testing is a question of law. Fortunately, the United States Supreme Court will soon consider the Patent Code's time limit for patent filing in Pfaff v. Wells Electronics. Hopefully, the Supreme Court will settle this area of patent law.

Part III shows how the Federal Circuit overlooked this Supreme Court precedent. Part V analyzes the Federal Circuit's Lough decision. Specifically, Part V argues that the Federal Circuit departed from Supreme Court case law when the court held that bars on the use of an invention before patenting are questions of law.

A. General Patent Law

If an inventor obtains a patent, the Patent Code gives an inventor monopoly rights for twenty years after applying for a patent.

If the inventor uses the invention in public more than a year before applying for a patent, an inventor loses the right to obtain a patent. If the inventor does not apply for a patent within one year after using the invention in public, the law assumes that the inventor did not want patent protection and that the inventor donated the invention to the public. Section 102(b) of the Patent Code bars an inventor from obtaining a patent if any public use of a completed invention occurs more than one year before the inventor applies for a patent.

Patent law determines that experimental use occurs when the inventor, or anyone else, tests an invention in such a manner. SUPREME COURT HELD PUBLIC USE AND EXPERIMENTAL USE ARE QUESTIONS OF FACT

The question for the trial jury was whether the inventor's experimental use of the machine before applying for a patent made the patent invalid. The Supreme Court held that public use and experimental use were questions of fact and that the law supported the jury's holding that the patent was valid because Kendall was experimenting with the invention before applying for a patent. FEDERAL CIRCUIT DEPARTURE FROM KENDALL

The Federal Circuit took a different approach than the Kendall court regarding whether experimental use is a question of fact or law.

Federal Circuit law regarding whether experimental use is a question of fact or a question of law is not entirely consistent. At other times the Federal Circuit has held that experimental use is a question of law.

In Foster, the Patent Office Board of Appeals ("Board") rejected an appeal of a patent denial. After the applicant appealed, the United States Court of Customs and Patent Appeals, a predecessor to the Federal Circuit, affirmed the Board's denial of the patent. The Corcoran court based the decision on the law mentioned in Foster.

When faced with a purely experimental use case, the Federal Circuit used the Corcoran court's reading of Foster to decide that all 102(b) bars are questions of law. The district court ruled the patent invalid as a matter of law. After Barmag appealed, the Federal Circuit affirmed, finding Barmag's patent invalid because Barmag violated a 102(b) bar. The Federal Circuit ruled that all 102(b) bars, including public use, are questions of law. Barmag did not refer to Kendall, the Supreme Court precedent that found experimental use is a factual question.

Lough did not patent his invention during this time either. Lough filed for a patent in June 1988 and the Patent and Trademark Office issued a patent a year later.

Lough then sued Brunswick for patent infringement and won a jury verdict. In Manville, the Federal Circuit mentioned that experimental use is a question of law.

After ruling that experimental use was a question of law, the Lough court found that Lough's six prototypes were indeed in public use. The Lough court concluded that the jury's finding of experimental use was incorrect as a matter of law.

The Lough court erred in its ruling. The court did not follow Supreme Court precedent. The Lough Court Incorrectly Chose Not To Follow The Supreme Court's Kendall Decision

The Supreme Court has uniformly treated public use and experimental use as questions of fact. The Supreme Court precedent provided guidance for experimental use questions before the Federal Circuit.

B. Federal Circuit Erred When Reading Foster-Corcoran-Barmag Trio

This mistake resulted in the Lough court erroneously holding that experimental use is a question of law. If judges, patent attorneys, and business people could predict a patent's validity, appeals on experimental use would be less likely. Consequently, the Lough court held that judges should decide experimental use questions.

In Lough v. Brunswick, the Federal Circuit incorrectly decided that experimental use is a question of law. The Lough court ignored the Supreme Court's Kendall case and misconstrued other precedent.

Patent Experimental Use - Invalidity in Lough V Brunswick (Fed Cir 1997)

Patent Law Regulates Many Different Types of Inventions

The Advantages of Patent Law

What Does Patent Law Do?

Patent law prevents others from using the ideas and designs of an inventor.