In re Kollar, 286 F.3d 1326 (Fed. Cir. 2002).
Subject
On-sale bar under 35 U.S.C. § 102(b)
Procedural History
The PTO examiner rejected the patent claims based on a purported sale of the invention by the assignee, Redox Technologies, to Celanese Corporation. The PTO Board of Appeals and Interferences affirmed the claims of Kollar’s patents to be unpatentable under the on-sale bar. A rehearing by that Board affirmed. Kollar appealed to the Federal Circuit. The Federal Circuit vacated and remanded.
Analysis
John Kollar filed a patent for a process for preparing dialkyl peroxides with a heterogeneous acidic catalyst. The claims were rejected because the PTO found the invention was on-sale in this country more than one year prior to the date of application in violation of § 102(b).
Kollar defended his patent saying the agreement with Celanese was for experimental use, that the invention was not ready for patenting, and that the agreement with Celanese was a license, not a sale.
The court determined that the invention had been reduced to practice so was ready for patenting under the Pfaff test.
The court concluded that the agreement with Celanese was for R & D with the aim for a commercial production plant approval in 5 years, and if later any commercial products were produced, Redox was to receive royalties from products manufactured using the claimed process. The court concluded that the Agreement with Celanese did not indicate that a product from the claimed process was offered for sale. The court said that merely granting a license to the invention, without more, does not trigger the on-sale bar. The court cited Moleculon v. CBS, 793 F.2d 1261 (Fed. Cir. 1986), in stating that an assignment or sale of rights in the invention is not a sale of “the invention†within the meaning of 102(b).
The court also said that when money changes hands as a result of the transfer of title to a tangible item, a sale has occurred, as opposed to a claim to a process that is a series of acts or steps. If the buyer acquires “know-how†about the process and obtains the freedom to carry it out, that is not a sale within the meaning of 102(b). The court discussed several cases the court said the Board misinterpreted in making its ruling. The sale by the patentee or a licensee of the patent of a product made by the claimed process would be a sale.
The court held that “ because the Celanese Agreement did not involve the sale of a product of the claimed process, but rather provided Celanese with a license to practice the claimed process and “information defining an embodiment†of that process, that agreement did not trigger the on-sale barâ€.
The court reversed the Board and remanded to determine whether there was forfeiture of the right to obtain a patent by offering for sale a product made from the process, or for offering to actually perform the process commercially under 102(b).
Subject
On-sale bar under 35 U.S.C. § 102(b)
Procedural History
The PTO examiner rejected the patent claims based on a purported sale of the invention by the assignee, Redox Technologies, to Celanese Corporation. The PTO Board of Appeals and Interferences affirmed the claims of Kollar’s patents to be unpatentable under the on-sale bar. A rehearing by that Board affirmed. Kollar appealed to the Federal Circuit. The Federal Circuit vacated and remanded.
Analysis
John Kollar filed a patent for a process for preparing dialkyl peroxides with a heterogeneous acidic catalyst. The claims were rejected because the PTO found the invention was on-sale in this country more than one year prior to the date of application in violation of § 102(b).
Kollar defended his patent saying the agreement with Celanese was for experimental use, that the invention was not ready for patenting, and that the agreement with Celanese was a license, not a sale.
The court determined that the invention had been reduced to practice so was ready for patenting under the Pfaff test.
The court concluded that the agreement with Celanese was for R & D with the aim for a commercial production plant approval in 5 years, and if later any commercial products were produced, Redox was to receive royalties from products manufactured using the claimed process. The court concluded that the Agreement with Celanese did not indicate that a product from the claimed process was offered for sale. The court said that merely granting a license to the invention, without more, does not trigger the on-sale bar. The court cited Moleculon v. CBS, 793 F.2d 1261 (Fed. Cir. 1986), in stating that an assignment or sale of rights in the invention is not a sale of “the invention†within the meaning of 102(b).
The court also said that when money changes hands as a result of the transfer of title to a tangible item, a sale has occurred, as opposed to a claim to a process that is a series of acts or steps. If the buyer acquires “know-how†about the process and obtains the freedom to carry it out, that is not a sale within the meaning of 102(b). The court discussed several cases the court said the Board misinterpreted in making its ruling. The sale by the patentee or a licensee of the patent of a product made by the claimed process would be a sale.
The court held that “ because the Celanese Agreement did not involve the sale of a product of the claimed process, but rather provided Celanese with a license to practice the claimed process and “information defining an embodiment†of that process, that agreement did not trigger the on-sale barâ€.
The court reversed the Board and remanded to determine whether there was forfeiture of the right to obtain a patent by offering for sale a product made from the process, or for offering to actually perform the process commercially under 102(b).