We’ll start with the conclusion: don’t use your invention in public until AFTER you file a patent application.

Back to the beginning:  Under the patent statute, a ‘public use’ of an invention prior to filing a patent application will destroy U.S. patent rights to the invention.  Before March 16, 2013, the inventor had one year after the public use to file the application.  On March 16, 2013 the law changed and any public use without a pending patent application IMMEDIATELY terminates patent rights.

But what is a ‘public use?’  Is a use that does NOT disclose the invention a ‘public use?’  How about use by a trusted confidant?  What if the use if not by the inventor, but by a third person?  What if an invention is stolen and the thief or a person who receives the invention from the thief uses the invention in public?

The Federal Circuit Court recently considered these questions in Delano Farms v California Table Grape Commission.   Delano Farms challenged plant patents (yes, you can patent a plant) for two grape varieties owned by the U.S. Department of Agriculture.  Before the U.S.D.A. applied for patents, an employee acting without authorization provided grape cuttings to two grape growers.   The employee knew that his action was unauthorized and admonished the grape growers to keep the plants secret.  The grape growers grew and propagated the grapes in secret.  They informed one other person and provided plant material to that person, a confidant of the grape growers, who also grew the grape plants in secret.  The grapes were grown in publicly visible fields, but were not labeled and were indistinguishable from the other grape plants in the fields.

The Federal Circuit determined that under these facts, the use of the grape plants by the grape growers was not a ‘public use’ and did not invalidate the plant patents.  The factors that the court considered important were that the invention was not commercially exploited (at least not during the period that would trigger the bar), that the use did not create an impression in members of the public that the invention was available, and, most importantly, that the parties involved, including the U.S.D.A, the discloser and the grape growers, all treated the grape plants as secret and took steps to keep the grape plants secret. The court applied pre-March 16, 2013 law, but we believe that the results would be the same for post-March 16, 2013 law.

The most interesting question is one that the court did not decide – whether public use of an invention by a thief who steals the invention or receives the invention as stolen property triggers the ‘public use’ bar and terminates patent rights.  The court did not reach this question because there was no ‘public use.’

Want to avoid ever having to fight this issue out in court?  File your patent application before you use the product where anyone can see you who does not owe you a duty of secrecy.

— Robert Yarbrough, Esq.