Intellectual Property Directions

As Dennis Crouch of the Patently-O blog wrote “The CAFC once again reaffirmed patent law’s parallel to Chicago democracy: File early and often.” With the easy filing opportunity of provisional applications, there was no good reason for commercial sewing machine manufacturer Atlanta Attachment to lose its patent for failure to file before the “on-sale” bar date. But it did.

Atlanta was developing an automatic ”gusset ruffler” machine for Sealy, the mattress company, under a confidentiality agreement, with the intent that, if successful, Sealy would patent the machine and Atlanta would only sell the machine to Sealy. In effect, Atlanta was performing paid R&D work for Sealy.

Atlanta built four sequential prototype machines. Sealy tested them as they were ready and provided feedback to Atlanta. Atlanta was paid for the prototypes and included offers to sell production models with their invoices. Ultimately Sealy decided not to move to the production stage and allowed Atlanta to retain the rights to the machine and to sell them to other companies, so Atlanta filed for and received patent US 6,834,603.

When Atlanta tried to sue Leggett & Platt for infringement, L&P successfully defended itself in the Court of Appeals (See CAFC decision) by pointing out how Atlanta had made a legitimate offer to sell their third prototype more than a year before filing the first patent application. That is, Atlanta ran right into the on-sale bar to obtaining a patent.

The “on-sale bar” is intended to keep inventors from obtain the commercial advantage of a patent for longer than the statutory period. In order to be barred from getting a patent, you must make a real offer to sell your invention AND your invention must be ready to patent.

In Atlanta’s case it appears they might have thought that their ruffler was exempted from these rules under the “experimental use” loophole. Perhaps they figured that as long as Sealy was paying them to develop the ruffler and was testing it and giving feedback they were still in “experimental mode”. It was not until Sealy ended the project that Atlanta even started to think about applying for a patent.

The “experimental use” loophole allows an inventor to sell copies of his invention and not be barred from a patent IF the purpose of the sale was to determine (viz., experiment to see) if the invention works as intended. Unfortunately for Atlanta, the judges ruled that Sealy’s testing and feedback, at least after the third prototype, was not experimental use; instead it was simply a customer trying to determine if the invention, as then embodied, met their requirements. That their customer felt the invention needed changes or improvements to make it commercially viable was not experimentation to see if the invention worked as claimed.

It is worth a note that this lesson is the corollary to my dictum that to be patentable your invention doesn’t have to work well. As the CAFC said:

The district court erred in concluding that these facts showed the third prototype was not suitable for its intended purpose. This is because an invention can be considered reduced to practice “even though it may later be refined or improved.” Emphasis added

Had Atlanta not been lulled into thinking they didn’t have to file as long as they were working with a development partner they could have easily filed a series of provisional applications, each one adding the improvements they had made since the previous filing. They then would have had a year to decide if the then described invention worked as intended and was worth the investment in a utility patent.

This entry was posted on Monday, February 25th, 2008 at 3:53 pm and is filed under On-Sale bar, Patent Prosecution. You can follow any responses to this entry through the RSS 2.0 feed. You can leave a response, or trackback from your own site.