Patent Law

Remedied

By Gary Odom and Jordan Kuhn

Claim 2 of  Natures Remedies' herbal weight loss patent 5,945,107 lost terminal weight before the BPAI, based upon a § 102(b) prior art application in Demark for clinical testing of an anticipatory compound. On appeal to the CAFC, the anticipation of the reference was undisputed. The issue was whether the application "was accessible to the public and therefore a "printed publication" under 35 U.S.C. § 102(b)."

In re Natures Remedies (CAFC 2008-1436) non-precedential

35 U.S.C. § 102 "serves as a limiting provision, both excluding ideas that are in the public domain from patent protection and confining the duration of the monopoly to the statutory term." Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 64 (1998). It provides that: "A person shall be entitled to a patent unless . . . the invention was patented or described in a printed publication in this or a foreign country . . . more than one year prior to the date of the application for patent in the United States." This statutory "bar is grounded on the principle that once an invention is in the public domain, it is no longer patentable by anyone." SRI Int'l, Inc. v. Internet Sec. Sys., 511 F.3d 1186, 1194 (Fed. Cir. 2008) (citation and internal quotation marks omitted).

Public accessibility requires only that a public citizen could ferret it out.

"Accessibility goes to the issue of whether interested members of the relevant public could obtain the information if they wanted to." Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1568 (Fed. Cir. 1988). Thus, a reference will be deemed "publicly accessible" if it:

has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it and recognize and comprehend therefrom the essentials of the claimed invention without need of further research or experimentation.

In re Wyer, 655 F.2d 221, 226 (C.C.P.A. 1981); see Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006).

The secretary for the responsible Danish committee declared the clinical testing application "had "been open to inspection by the public"" in accordance with Danish law, and that applications for clinical trials were indexed.

Natures Remedies had a Danish attorney opine that the prior art application had not been public, because of a possible exemption in the law. There was no evidence to back that up, so the CAFC panel affirmed the BPAI invalidation.

Affirmed.

Full post as published by The Patent Prospector on March 12, 2009 (boomark / email).