The inventor or a third party’s efforts to maintain control over the use of the invention may negate an otherwise public use under 35 U.S.C. § 102(b). Here, for example, a third-party misappropriator who illicitly obtained the claimed invention but for that reason took steps to keep his possession a secret was found to be insufficient to rise to the level of a public use under 35 U.S.C. § 102(b). “[A]n agreement of confidentiality, or circumstances creating a similar expectation of secrecy, may negate a public use where there is not commercial exploitation.”
Background / Facts: This appeal involves a challenge to the validity of two plant patents for varieties of table grapes developed by the U.S. Department of Agriculture (“USDA”) and licensed to the California Table Grape Commission. The plaintiffs filed suit seeking to invalidate the patents on the ground that the two grape varieties were in public use more than one year before the applications for both plant patents were filed, and that the patents are therefore invalid under the public use bar of 35 U.S.C. § 102(b) (2006).
Issue(s): Whether the actions of two individuals who obtained samples of the two patented plant varieties in an unauthorized manner and planted them in their own fields constituted an invalidating public use of the plant varieties.
Holding(s): No. “The facts of this case … show that [the misappropriator] sought to maintain control of the plants he obtained. … Although [he] shared the plants with his cousin, the evidence showed that [the cousin] was aware of the need to keep the plants secret, and at [the misappropriator’s] urging, [the cousin] continued to treat his possession of the unreleased varieties as confidential and non-public. This case is therefore wholly different from the Supreme Court’s decision in Egbert v. Lippmann, where the inventor himself gave the invention to a third party with no understanding or expectation that the third party would maintain secrecy as to the invention.”