Be careful what you say, who you say it to, and when you say it!
by Michael Antone, U.S. Registered Patent Attorney
This is certainly the moral of the story in the recent Crown Packaging Technology, Inc. v. Belvac Production Machinery, Inc. case.
The U.S. Court of Appeals for the Federal Circuit (USCA-FC) found the patents at issue (related to can production) in the lawsuit were invalid based on the patent owner’s “quotation” letter to a customer regarding the patented product, deemed a commercial offer for sale.
In the U.S., under 35 USC 102(b), “A person shall be entitled to a patent unless-(b) the invention was … on sale in this country, more than one year prior to the date of the application for patent in the United States”. It is noteworthy that while some countries do not have “on sale” bars to patents, others are more strict about public disclosures requiring absolute novelty, meaning that any public disclosure of an invention before a patent application is filed is a bar to patentability.
In the Crown case, the earliest filing date for these patents was April 24, 2008, meaning that any “offer for sale” or public disclosure before April 24, 2007, would be a bar to patentability in the U.S.
Unfortunately for Crown, the USCA-FC ruled that Crown’s quotation sent to Complete Packaging Machinery on November 14, 2006, was an “offer for sale” and therefore a bar to patentability.
The Crown case presents an unfortunate example of the importance of assessing your patent protection strategy for inventions before introducing products and services that use your inventions to the market. Without a proper assessment, your business may lose the competitive advantage of its intellectual property.
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