Tips for Patentability Searching

Tips for Patentability Searching

By Frederic M. Douglas

© 2012, Frederic M. Douglas, All Rights Reserved.

Persons new to filing patent applications often have basic questions regarding patent searches. Should an inventor do a patent search? Is a patent search required? Does it matter when a patent search is done? What happens when nothing is found? What should be done when the inventor finds out that the invention is not patentable?

Patent searches are optional. There is no requirement in the U.S. that an inventor perform a patentability search before filing a patent application. Some rookie inventors are confused by the requirement that IF a search is done and relevant prior art is discovered, that relevant prior art should usually be disclosed to the patent examiner or the inventor may be accused of fraud. Note that still, a prior art search is not required, just passing on known relevant prior art from an optional search is required.

Some inventors take the position that they do not want a search so that they don’t find out any bad news. If they find out no bad news, there is nothing withheld from the patent office, as the inventor never had the bad news to reveal. Also, waiting for patent search results and later making needed invention changes, can delay a race to the patent office. Certainly, when the U.S. Patent Office switches to a first-to-file system on March 16, 2013, promptly filing patent applications will become more important.

However, the patent office does do its own patentability searches. So, at some point the inventor may find out the bad news that prior art bars getting a patent issued. By the time that the patent examiner conveys the bad news, the inventor has spent a considerable amount to prepare and file the patent application, waited several years for the first notice from the examiner, and invested funds on manufacturing and marketing the invention with an expectation of exclusivity. By the time that the inventor finds out that no patent will issue, the original patent application issues, telling the inventor’s competitors how to make and use the invention. Once the competitor finds out that no patent will issue, then they can exploit the technology with impunity without paying one dime.

Certainly, an inventor should consider the patentability search as similar to having a mechanic review a used car before purchase. While the mechanic will not guarantee that the car will not break down, you will surely find out if there are any clear mechanical problems before you commit to buying the car, registering it, and maintaining it throughout its lifetime. In the same way, an inventor should want to know if there are any clear defects in the idea of patenting an invention before committing to filing a patent application (registering) and paying thousands of dollars in maintenance fees to maintain the life of the issued patent.

Just like the reviewing mechanic cannot guarantee that the car will last forever, a patent searcher cannot guarantee that no prior art exists that could block getting a patent. The mechanic looks for bad news that can be discovered without taking every bolt and washer apart on the car. The patent searcher can look for prior art, in the searcher’s native language, on computer databases throughout the world. However, the patent searcher is not likely to be aware of a single copy of a Swahili-language doctoral thesis sitting on a library shelf in Tajikistan. Thus, care should be taken to have a very good searcher involved with an understanding that searching must reach as far as feasible but at some point must reach a limit.

Rookie inventors sometimes do their own patent search and claim that they found “nothing like it” regarding their invention. The reality that they are missing is that their search was not competent. While there is no way to find every single piece of prior art throughout the universe, there also is no way to search adequately and not find at least some things that are related to the invention.

Another issue for novice inventors is finding barring prior art after performing an adequate search before filing a patent application. The fact is that a patent searcher can only find what is publicly available. If a search is performed on February 1st and the patent application is filed on April 30th, the patent office examiner may come up with prior art that only published on February 2nd.

Unfortunately, it is rather common that a patentability search comes up with a ton of prior art such that there is no way to get a patent for the invention. The good news is that the bad news is discovered before spending time and money on preparing and filing the patent invention that would have been rejected promptly. The take home message for the inventor losing out on a patent search is that the inventor now has a thorough review of the prior art, which should be helpful to learn further aspects that can be incorporated into improving the invention.  The inventor can now brainstorm with a focus on significant novel aspects of the invention above the prior art.

After further consideration of the unforeseen aspects of the prior art, the inventor should focus on noting what aspects are missing from the prior art so that the invention can contain several inventive steps above the general state of the prior art. To put it more bluntly, the inventor needs to get back to the drawing board and put more meat onto the present skeleton. The discovered pieces of prior art will help the inventor make progress.

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Tips on patent subject matter eligibility for computer readable media

Tips on patent subject matter eligibility for computer readable media

© 2012 Frederic M. Douglas. All Rights Reserved.

               Many patent applications have been filed aimed at protecting inventions involving computers. Often the patent claims describe using disc drives or other media for storing data. A common name for data storage devices (such as hard disks, floppy disks, USB drive, DVD, CD, media cards,  and so on) has been “computer readable media.”

This term seems broad enough to cover every type of data storage device. However, one thing to keep in mind in writing patent claims is that one wants the claim scope to be broad enough to cover everything under the sun while being narrow enough to not be already present in the prior art.

For “computer readable media” another concern is not just prior art, but patentability under the law. The United States Patent and Trademark Office (USPTO) interprets the term, “computer readable media” more broadly than just data storage devices. The USPTO interprets “computer readable media” to include signals in addition to data storage devices. The USPTO’s understanding of the “ordinary and customary meaning of ‘computer readable media’” to include non-transitory tangible media and transitory propagating signals.



The USPTO considers data storage devices to be “non-transitory tangible media” which is only one part of “computer readable media.” Note that signals, such as radio signals, microwave signals, and such can carry data that is “computer readable.”



Thus, if the patent specification does not exclude signals from the term, “computer readable media,” then the USPTO claim is deemed not patentable as transitory embodiments are not patentable under 35 U.S.C. Section 101. See In re Nuijiten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007). Often, such a problem may be repaired by an amendment that does not add new matter. Similar problems happen for claims to “multi-cellular organisms” as that term includes human beings, which are not (yet) patentable.

Frederic M. Douglas

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Who’s an Inventor for a Patent?

When filing a patent application, the applicant must state correctly who are the inventors of the invention(s). If the patent issues with the wrong inventor listed, the patent may end up being invalid or unenforceable. Be sure to not omit one of the inventors or to add someone to the patent application that is not actually an inventor.

What is a patent?

In the U.S., a patent is an intangible form of property allowing the patent owner to stop others from practicing the invention.

What is practicing the invention?

Practicing the invention means making, using, selling, marketing, or importing the invention into the United States.

So, does the patent give the patent owner the right to practice the invention?

No. This is one of the most common misconceptions about patents. Owning a patent means that you have permission by the government to sue someone else for practicing your invention without your permission (“infringing your patent claims”).

So who is an inventor?

An inventor is one that thinks up an invention (“conception”) and figures out how to make the invention and how to make it work (“reduction to practice”). When you have more than one inventor, each inventor should have made an independent, conceptual contribution to an invention.

What types of inventions are patentable?

The invention must be a new and useful process, machine, or composition of matter that is not obvious. There are some exceptions for certain types of inventions, but for the general nature of this discussion, the above criteria provide a good starting place for understanding patentability.

What is “conception?

Conception can be defined as forming in the mind a definite and permanent idea of the complete and operative invention as it later will be applied in practice.

How do I know when I have an invention?

When you can describe the invention so that another person of ordinary skill in the relevant field can build or use the invention without too much research or experimentation.

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A Star In The Night

Photo by Dylan Edwards

When I think of February, I think of Valentine’s Day, Ground Hog Day, and Presidents’ Day. I also remember that Black History Month falls in February, the shortest month of the year. This makes me remember a joke I heard on the WB network. “There they go again, always trying to keep the Black man down, giving him the shortest month of the year.” Back in the day when they first started Black History Month, I learned in school about famous Black heroes, Martin Luther King, Sojourner Truth, Benjamin Banneker, and others. We remember these leaders for the examples they set, the adversity they faced with dignity, and for the effects they had on others. In my personal list, I place the name of my grandmother, Philee Douglas, as a great leader. She’s not famous. However, she has left a profound effect on my life, through her example.

She was born over 100 years ago, in Mississippi. As many Blacks did then and now, her parents decided to be creative in naming her. They wanted to use the word “love.” The Greek word, “Philo” means love, but the last letter makes the word seem masculine. So they played with the word a little, and came up with “Philee.” In Mississippi, my grandma married Charles Douglas. They had six children, the eldest being my father.

My grandma took the children and took off for California. Back then Mississippi was the poorest state in the Union. It’s the same way now. People, Black and White, have continually moved out of Mississippi, looking to go anywhere, so long as it wasn’t Mississippi. Besides being a poor state, I don’t think that I am going out on a limb when I assume that Blacks in Mississippi weren’t living the good life, especially not during the Great Depression. My grandma ended up in a place now called “South Central L.A.”

Without fail, when you entered her house, there would be the smell of something cooking in the kitchen. I didn’t think she ever completely turned off the stove. She always pushed food our way. I can still remember her giving me the juiciest turkey I ever tasted. She loved jazz music. When I would visit her, her records would play in the background. I talked a lot with my grandma. She would always have an opinion on something. When I would tell her about something I was doing in school, she would often smile and respond, “Sho’ Nuff?” You see, my grandma spoke what some people call “Ebonics.”

Though she talked this way, she didn’t prescribe Ebonics for her children or grandchildren. She came from Mississippi, where undereducation was normal, more so for students of “Separate But Equal” schools. Though she never hit us, we knew that if anyone ever spoke Ebonics in her house, they would get slapped upside the head. There was no messing around. You acted properly around grandma. My grandma would tell me to go to school, and work hard. She didn’t go to school, but she worked hard. During the Great Depression, she worked as a maid. This was the career track for a Black single mother of six, with no education. Wanting the best for her children, she sent them to Catholic School. Though she had to shop at thrift stores, her kids all owned suits. After she reached an age where she could get Social Security, she continued to work as a maid. She told me that the Social Security check “Ain’t enough.”

She would come home exhausted and frustrated. She would tell me, “I’s tired a cleaning them White people’s floors.” Grandma said that when she would prepare to clean the floors, the woman of the house would say, “We lost our mop. But I happen to have this brush and some kneepads you can use.” Grandma told her she had better find that mop, because she wasn’t going to scrub the floor by hand. She would tell me about the fine furniture they had. How “That Lady’s smart! Gots plastic on da couch, and still makes da chillen sit on da rug.” Then she’d look at me and say, “Freddie Jr., youse sittin’ on my couch, sit up straight, don’t you be actin’ lazy.” As a teenager, I got into a phase that some adolescents get into, acting weird, off to themselves, not paying attention to anyone else. I would walk right by Grandma in the morning without saying “Good Morning” or even “Hi.” Grandma didn’t go for that. She made you straighten up and fly right. She made sure you learned courtesy around her.

Once, my brother and I were sitting on the couch, looking bored. Grandma said, “Get up and go to church.” We said that we didn’t know where a church was. She gave us directions, gave us money for the offering plate and sent us on our way. We could have easily not have gone and act like we did go to church. Though we didn’t want to go, especially not to a Catholic Church, we had too much respect for our grandma to lie to her. We walked to the church. After arriving back to Grandma’s house, she explained to us that when she came to California, she wasn’t a Catholic. However, she stuck with the Catholic Church, “Cause they’s da only ones dat helped me when I came to California.” She went through some tough times to get a better life for her children.

I am reminded about my grandma frequently. Every time someone comes on TV, saying, “I live in the Hood. I’m Black. The reality of life on the streets, in the ghetto, is violence. I don’t know any other way. I’m a victim of society.” I also am reminded of her when I see people promoting Ebonics. Some people think this is what being Black is all about. They call you an “Oreo” if you don’t walk like a chicken and talk like Buckwheat. These aren’t things of pride. This is not a part of Black culture. It is not a part of anyone’s culture.

This month, we celebrate our Black heroes. You will never hear a great Black hero use their environment for an excuse for lack of respect. No Black hero speaks Ebonics. Martin Luther King, Jr. didn’t say, “I Have An Excuse.” Nor did he say, “I Has Me A Dream.” Frederick Douglass, Malcolm X, Barack Obama, Barbara Jordan. I could go on. You never heard Ebonics from them. How about Louis Farrakhan? He doesn’t speak Ebonics.

I think of what my grandma would say. I remember her example. How she wouldn’t let me think I can slack off. Responsibility, hard work, respect for others, self-respect, get an education. Grandma Douglas had nothing going for her, but herself. She could have easily given up. Black, single mother of six, undereducated, living in South Central. She lived in the ghetto, but the ghetto didn’t live in her.

 © Frederic M. Douglas 1998, 2011.  All Rights Reserved.

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Ring Back Tones in Songwriter Agreements

A songwriting agreement often provides for a share of royalties that may vary depending on the category of use.  These categories include foreign rights, movie rights, mechanical licenses, public performances, synchronization licenses, print rights, and other categories.  Most agreements between a publisher and a songwriter contain a catch-all paragraph for a miscellaneous category in which the publisher and the songwriter share in the royalties on a 50:50 basis.  Take care to understand that a royalty amount and a royalty share may depend on how the use of the music is categorized.

Ring tones are the sounds that alert you when someone is calling you.  Ring back tones are sounds that are played to you when you are calling someone else’s telephone.

Photo by Red Morris

The ambiguity for ring tones and ring back tones lies in the fact that they can fit in the mechanical license category, the foreign license (if tone used outside U.S.), the public performance category, and the miscellaneous category.

For clarity, one should ensure that the songwriting agreement expressly state the royalty share between publisher and songwriter for ring tones and ring back tones.  Otherwise, your share may become the lesser of the possible categories stated in a boilerplate agreement.

Frederic M. Douglas is an intellectual property attorney based in Irvine, California with clients all over the world.

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8 Tips For Inventors Planning To File A Patent Application

Copyright 2010 Frederic M. Douglas.  All Rights Reserved.

1. When you get your stroke of genius and come up with an idea, WRITE IT DOWN! You need to create a record of invention before going any further.

You should list:

(a) A full and complete description of your idea;

(b) The date (very important);

(c) Your signature; and

(d) Dates and signatures of at least two people to witness and understand your having invented your invention.

2. Don’t blab about your invention to anyone without a written confidentiality agreement.

3. Keep written records of your progress in developing the invention:

(a) Write down all modifications, experiments, alternatives, and other details.

(b) Keep copies of any emails, notes, letters, text messages or anything documenting discussions with others.

(c) Keep receipts for anything that you buy for your invention, including parts, software, consultant costs, marketing costs, advertisements, or anything having to do with your invention.

(d) Yes, these records must be in writing and dated.

4. Assess the marketability of your invention.

Rule of thumb – total sales should be twenty times or more of the cost of inventing and patenting your invention. A suggested rule of thumb to determine whether your invention will sell well is that the total sales will be at least twenty times the cost of inventing and patenting it.

5. Do a patent search:

(a) Is your invention novel?

(b) What is the prior art?

(c) If you are improving on something that has already been patented, is your invention a new physical feature, a combination of prior separate features, or a new use of a prior feature?

(d) If you are improving something that has already been patented, is your invention not obvious?

(e) Does your invention produce a new and unexpected result?

6. Plan on filing your patent application sooner rather than later.

(a) Only one year grace period after public disclosure in U.S.

(b) Only 6 months in Japan.

(c) No grace period in Europe.

7. Consider the pros and cons of filing a provisional patent application:

(a) First things first – it is not a “provisional patent.” It is a “provisional patent application.” Do not trust anyone that does not bring up the fact that the provisional patent application never automatically becomes a regular patent application without doing something extra. There is no such thing as a provisional patent. Remember this; the patent office doesn’t even read your provisional application. They just take your money and stamp it with a date.

(b) Pro: Save money and time. Saves your place in line before competitors, while you can work on marketing, developing technology, and deciding whether to expend additional funds. Big companies often file provisional patent applications.

(c) Con: Why wait? If a competitor files a regular patent application while you have only filed a provisional patent application, then the competitor will probably beat you in getting a patent first. If your place is save in line, but the other person is ready to buy their ticket, you’re out of luck. To prepare a quality patent application, you have to spend a great deal of time stressing over many details. If you spend the time to do it right for a provisional, you lose nothing by filing a real application now.

8. Work with an experienced lawyer who is registered with the Patent and Trademark Office and does patent work for a living.

Frederic M. Douglas is an IP litigator, dedicated to pursuing practical resolution of problems concerning patents, trademarks, copyrights, trade secrets, and other areas of law.
(949) 293-0442

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Frederic M. Douglas – Registered Patent Attorney

  • Prosecution and preparation of provisional, utility and PCT patent applications in the biomedical, electronic, chemical, energy, desalination, aviation,electrophotograpy, business methods, telecommunications, database, and mechanical fields for concerns ranging in size from startup companies to Fortune 500 companies.
  • Preparation of freedom to operate opinions (non-infringement opinions).
  • Review and evaluation of intellectual property estates before acquisition.
  • Coordination of patent application filings and prosecution in  Europe, Asia, Australia, Mexico, and South America.
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    Developing A Discovery Plan For A Patentee Plaintiff

    © Frederic M. Douglas 2010.  All Rights Reserved.

     (A) Review Jury Instructions and Prepare a Proof Rubric

           Determine what you need to prove and what the defendant needs to prove.  Prepare a list of documents and testimony needed to support your case and refute the defendant’s case.  From this list, you now know what type of evidence to gather.

     (B) Propound a First Set of Written Discovery Requests

           Ask questions to identify witnesses and to find out what documents exist.   Propound requests for admission to exclude factual issues for trial.  Propound a global request for documents early, as you undoubtedly will encounter resistance needing efforts to pry documents from the defendants.

     (C) Depose the Defendant Under 30(B)(6) (If a Corporation)

           Generally this is done first to identify key documents, corporate structure, and witnesses. 

     (D) Propound More Written Discovery Requests

           Now that you have some documents, identified witnesses, and information from the first set of written discovery and deposing the defendant, follow up with more requests and discovery from third parties.

     (E) Depose Third-Parties

           After propounding discovery upon third parties, get them in a deposition.  Authenticate documents, secure admissions needed; gauge how the witnesses will perform at trial.  Depose key witnesses after less important witnesses, so that the key witnesses will be locked-in to the version of the truth provided by the secondary witnesses.

     (F) Depose Defendant

           Identify who is the real party-in-interest.  Depose that person on specific issues, such as validity, infringement, willful infringement, and other infringement defenses.

    (G) Prepare Follow-Up Requests For Admission

           Get necessary admissions nailed down.  Get the defendant to admit that at least some of the claim elements are found in the accused device or service.  Get admissions on the notice date of infringement, contentions regarding prior inventorship, first sale of accused device, and other issues.

     (H) Depose Expert Witnesses

           Investigate the expert’s other testimony.  Read everything that you can find authored by the expert or about the expert.  Craft questions for which the only reasonable answer will be answers that help the plaintiff.  In essence, prepare to use the defendant’s expert to make admissions that help your case.

     (I) Propound Final Written Discovery Requests

           Review your proof rubric (which you should have been doing all along).  What are you missing?  Ask for it.

     Frederic M. Douglas

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    International Intellectual Property Rights Regarding Plants Native To India: Texmati = Basmati?

    International Intellectual Property Rights Regarding Plants Native To India: Texmati = Basmati?

    © Frederic M. Douglas, April 1999; 2010.  All Rights Reserved.

    By Frederic M. Douglas, Esq.


    I.   Introduction

    In the age of global markets and the resulting development of international intellectual property rights, conflicts arise between industrialized nations seeking to develop new products from plants, and developing nations seeking to capitalize on their indigenous flora.  One example is the conflict over basmati rice.  Long identified as originating in the Indian sub-continent, basmati rice is prized for its distinctive aroma, flavor, and long, slender, fluffy grains.  The connection between India and basmati seemed threatened when the United States (“U.S.”) patented Texmati, described as an American basmati rice.  The Indian government seeks to have the U.S. revoke the patent as part of its plan to protect its rice industry.  This article explores this situation with an eye towards understanding what rights the patent provides Texmati and how it affects, if at all, India’s rice industry. 

    II.  Intellectual Property

    A.  Patents

    A patent for an invention is a grant of a property right by the government to the inventor.[1] The patent term is twenty years from the date on which the patent application was filed in the U.S.[2] The right granted by the U.S. patent extends only throughout the U.S. and its territories and possessions.[3]

    The patent rights are, in the language of the statute, “the right to exclude others from making, using, offering for sale, or selling” the invention in the U.S. or “importing” the invention into the U.S.[4]  What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention.[5]

    B.   Trademark

    A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce.[6]  The trademark identifies and distinguishes the goods of one manufacturer or seller from goods manufactured or sold by others.[7]  In short, a trademark is a brand name.[8]

    A certification mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce with the owner’s permission by someone other than its owner.  The certification mark certifies regional or other geographic origin, material, mode of manufacture, quality, accuracy, or other characteristics of someone’s goods or services. A certification mark can also demonstrate that the labor on the goods or services was performed by members of a union or other organization.[9]

    A collective mark is a trademark or service mark used, or intended to be used, in commerce, by the members of a cooperative, an association, or other collective group or organization, including a mark which indicates membership in a union, an association, or other organization.[10]

    C.   Plant Variety Protection

    The Plant Variety Protection Act[11] (PVPA), enacted in December of 1970, and amended in 1994, provides legal protection, similar to patents.  The right holders are breeders of new plant varieties which are sexually reproduced (by seed) or are tuber-propagated. Bacteria and fungi are excluded. The United States Department of Agriculture (“USDA”) administers the PVPA.[12]

    A Certificate of Protection is awarded to a breeder if the USDA agrees that the plant variety is new, distinct from other varieties, genetically uniform, and stable through successive generations.  The certificate is valid for twenty years for most crops and 25 years for trees, shrubs, and vines. The breeder has exclusive rights to multiply and market the variety’s seed.

    The owner must prove the distinctness, uniformity, and stability of the new variety. The applicant may: list the single variety he or she believes is the one most similar to the new variety and describe how the new variety differs from it; list a group of varieties to which the new variety is similar, and describe how it differs from that group; or, describe how the variety differs from all other known varieties.  A statement of uniformity must report the level of variability in any characteristic of the variety.

    The PVP Office maintains databases for crops of both public and private varieties. The plant variety examiner uses these and other sources to determine which, if any, varieties are indistinguishable from the new one. If the examiner finds varieties which appear to be indistinguishable from the application variety, the applicant will be notified that supplemental data are necessary. To obtain additional data, applicants may use DNA profiling or other analyses to show distinctness. The USDA does not perform tests to confirm a variety’s distinctness.

    III. International Trade Agreements

    A.   World Trade Organization (“WTO”) and General Agreement        on Tariffs and Trade (“GATT”)

    The GATT is an international agreement that sets the rules for conducting international trade in goods only.[13]  The WTO is an international organization that incorporates the GATT.  The WTO updates the agreement to include services and intellectual property.[14]

         B.   Trade Related Aspects of Intellectual Property (TRIPs)

    The WTO’s TRIPs Agreement is an attempt to harmonize intellectual property rights globally and provide a dispute settlement system.[15]  TRIPs covers copyrights, trademarks, patents, integrated circuit designs, trade secrets, industrial designs, and geographic indications.[16]

    WTO member countries may refuse a patent for an invention if its commercial exploitation is prohibited for reasons of public order or morality.[17]  A country may also exclude plants and animals (except microorganisms), and biological processes for producing plants or animals (except microbiological processes).[18]  However, if the country does not allow plant patents, the country must provide some protection.[19]  One permitted alternative is providing plant breeder’s rights[20] under the International Union for the Protection for New Varieties of Plants (“UPOV”).[21]  If a country did not protect plants before 1 January 1995, it may delay plant protection until 1 January 2005.[22]

    Articles 22 to 24 of TRIPs refer to protection of indicators of geographic origin.[23]  This portion of TRIPs protects geographic indications which identify a product as originating from a member-state where a reputation is attached to that geographic origin.[24]  Member-states may pursue legal recourse to discontinue the use of misleading geographic indications. 

         C.   Provisions For Developing Nations

    TRIPs includes special transitional provisions for the introductory period of TRIPs.[25]  Normally, members’ laws and procedures needed to comply with TRIPs by 1 January 1996.[26]  Developing countries have until 1 January 2000 to adopt the TRIPs provisions.[27]  The least developed countries have until 1 January 2006 to comply with TRIPs.[28]

    D.   The International Union for the Protection of New              Varieties of Plants — UPOV

    The UPOV is an intergovernmental organization based in Geneva, Switzerland.[29]  Its purpose is to accord exclusive property rights to plant breeders in nations that are members of the UPOV convention.[30]  A plant variety may receive protection if the variety is distinct from commonly known varieties, uniform, stable, and novel.[31]  The plant variety must not have been commercially used before certain dates measured from the application date.[32]

    Plant breeders in one UPOV member nation may obtain protection in other UPOV member nations.[33]  Plant breeders in non-member nations cannot use the UPOV convention to protect a plant variety.  India is not a member-state of this agreement.  Researchers are not prohibited from using protected plant varieties for research, including the use of the plant variety to breed new varieties.[34]

    IV.  Commercial Exploitation of Plants and Plant Products

    India has a long history of using herbal products for medicinal or cosmetic purposes.[35]  However, India has not attempted to seek commercial gain from this knowledge until recently.  Some Indians believe that U.S. companies are seeking to exploit Indian knowledge of plant uses.

    A.   Neem — Natural Pesticide

    Indian farmers have used neem, a plant native to India, as a pesticide for hundreds of years.[36]  The farmers boil the seeds, and then let them soak overnight.[37]  The resulting foam is removed and used to kill insects.[38]

    Once obscure, the neem tree is now the focus of global commercial and scientific attention.[39]  India’s Neem Foundation[40] promotes the neem tree as a wonder plant that provides: a natural pesticide;[41] medicine for skin disorders, pain, fever, and infection;[42] firewood;[43] birth control;[44] and a device to protect the Taj Mahal from environmental damage.[45]  The U.S. Environmental Protection Agency approves various neem-based pesticides.[46]

    Agridyne Technologies of Columbia, Maryland markets a product, “DAZA,”[47] manufactured in a manner similar to the Indian farmers’ method.[48]

    Environmentalists attempted to convince the U.S. Patent and Trademark Office (“USPTO”) to cancel Agridyne’s patent for DAZA based on a lack of novelty.[49]  The USPTO refused the request to cancel the patent because the challenge offered little well-documented evidence.[50]  Agridyne also claimed that it developed a method to make neem’s active pesticide ingredient last longer than the normal two week period.[51]  The European Patent Office determined that the neem patent was included in prior art.[52]

    B.   Turmeric — Yellow Spice With Pharmaceutical Uses

    In 1995, two U.S. scientists,[53] employed by the University of Mississippi Medical Center, obtained a patent for the use of turmeric to help wounds to heal.[54]  The USPTO canceled the patent in 1997 after a re-examination determined that the patent application did not satisfy the novelty criterion.[55]  The challenge to Agridyne’s patent was led by India’s Council of Scientific and Industrial Research (“CSIR”).[56]  The CSIR filed a petition, through a U.S. legal firm,[57] stating that turmeric was used to heal wounds for hundreds of years.[58]  The CSIR supported the petition with 32 published papers.[59]  The CSIR compared the successful petition to cancel the turmeric patent with the failed attempt in the neem situation.[60]  The CSIR’s director general, R.A. Mashelkar, said that Indians have nothing to fear in protecting a traditional knowledge base when a patent challenge is well argued and well supported.[61]

    C.   A Successful Compromise

    A conflict exists between plant variety rights protection and biodiversity protection.[62]  Biodiversity advocates believe that drug companies cannot take a country’s genetic resources without compensation.[63]  Some see this clash of plant breeder rights and biodiversity rights as incompatible.[64]

    However, this conflict was resolved in Thrivanthpuram, India over a herbal preparation from a medicinal plant, Trichopuszeylamicsu.[65]   This plant has been used by the Kani people in India, for many years, to treat fatigue.[66]  The Tropical Botanical & Garden Research Institute (“Institute”) found that the plant had properties that enhance the human body’s immune system.[67]

    Not wanting to wait the lengthy time to obtain an Indian process patent on the medicine, the Institute sought out the Kani people.[68]  They negotiated a license to manufacture the medicine from the Trichopuszeylamicsu plant.[69]   The Institute then sold its rights to a drug company for a sum plus a royalty for the following seven years.[70]  The Institute put fifty percent of the proceeds in a fund for the Kani tribe’s welfare.[71]  This agreement led to a compromise that ensured that the Kani people were satisfied and private plant breeder rights were awarded.[72]

    D.   Rice

    In the U.S., most people eat and enjoy rice occasionally.  In many parts of the world, rice is the chief food of millions of people.[73]  Indeed, in many countries, the word for rice is also used as the word for meals or food in general.[74]

         Some sources believe that the cultivation of rice started in India.[75]  One fact that supports this statement is that the Ganges and Brahmaputra rivers in eastern India overflow each spring, providing rice paddies with necessary water.[76]  Also, archaeological evidence suggests that an advanced system of rice cultivation existed in China and India 7,000 years ago.[77]

    E.   U.S. Rice Industry

    The U.S. is a major producer and exporter of rice.[78] Rice is grown in the U.S. mostly in Texas, Louisiana, California, and Arkansas.  Many consider the U.S. to have the highest quality rice in the world.[79]

    F.   Basmati Rice — Anything Else Is Just Rice

    Basmati rice, unlike usual types of rice, is aromatic and has an extra long grain.[80]  The aroma is described as nut-like or reminiscent of popcorn.  Basmati rice is usually consumed only on special occasions.[81]  Basmati rice is indigenous to India and Pakistan.[82]  In India alone, at least 400 varieties exist.[83]  B   Basmati rice comprises four per cent of India’s export earnings.[84]  India earns US$800 million annually from basmati rice exports.  Ten percent of these basmati exports are consumed in the U.S.[85] 

    In world markets Indian basmati rice is the most expensive rice available.[86]  In Europe the best U.S. rice fetches a price of US$500[87] per metric ton.[88]  Indian basmati goes for US$1200 per metric ton.[89]  The European Union gives Indian basmati rice a duty discount of US$300 per metric ton.[90]  Soon the European Union may cease giving Indian basmati rice a duty discount.[91]  In this event, perhaps European consumers will choose quality U.S. rice from companies like Uncle Ben’s over Indian basmati rice.[92]

    V. RiceTec and Basmati Patent

    RiceTec, an international corporation, produces “Texmati” rice which RiceTec calls an “American basmati.”  Texmati is a hybrid of aromatic rice and regular long grain rice,[93] sold by RiceTec since 1977.[94]  As the name suggests, this variety of rice grows in Texas.

    The USPTO granted patent No. 5,663,484 to RiceTec[95] for its variety of basmati.[96]  The patent also protected the American basmati plant and RiceTec’s method of breeding the plant.

    Specifically, one aspect of the invention relates to novel rice lines whose plants are semi-dwarf in stature, substantially insensitive to poor sunlight conditions, and high yielding.  The patent claims that the plant produces rice grains having characteristics similar or superior to those of good quality basmati rice.  Another patent claim relates to a “starch index” of a rice grain that predicts the grain’s cooking properties.  The patent also describes a method based on the starch index for identifying grains that can be cooked to the firmness of traditional basmati rice, and to use this method to select desirable segregants in rice breeding.      Although RiceTec has not filed for an Indian patent on its basmati, the company has successfully patented three different methods of milling rice.[97]  RiceTec also filed an application under the UPOV 1995 Plant Varieties Protection Act for its basmati lines.[98]

    VI.     Indian Intellectual Property Rights

          A.   Indian Patents

    India’s Patent Act differs in certain aspects from the U.S. Patent Act.  India does not permit patents for inventions regarding food, but does allow patents for food manufacturing processes.[99]  The food manufacturing patent term is only for five to seven years while other inventions may be patented for fourteen years.[100]  Agricultural techniques or methods are not patentable.[101]  If RiceTec were to seek an Indian patent for Texmati, its protection would be limited, if not denied.  Furthermore, for all patentable inventions, the Indian government may revoke a patent on public interest grounds.[102]

    Indian patent offices are known to be inefficient, averaging six years to issue a patent.[103]  Although the USPTO is also inefficient, U.S. patents are usually issued in no more than two years.[104]  If Indian patents are issued many years after application, the scientist may find it too late to capitalize on the invention.[105]

    B.   Indian Geographic Indications

    India does not have a Geographic Indication Act, which is part of the WTO agreement.[106]  The Indian government currently seeks to define “basmati” as a geographic term for a part of the Indian sub-continent.  The government claims to have records that prove that “basmati” has been used to denote quality in India a century ago.

    VII.  India’s Efforts To Have USPTO Rescind RiceTec’s Patent

    India levies a tax on basmati rice to support the country’s “Basmati Development Fund.”[107]  Indian basmati rice farmers pay 50 rupees per ton into this fund.[108]  The government will use the tax to support India’s efforts to overturn the U.S. patent.[109]

    India currently seeks to convince the USPTO to withdraw RiceTec’s patent for basmati rice.[110]  The Indian Agricultural Research Institute seeks DNA fingerprinting to determine the origin of the germ plasm RiceTec used to develop American basmati.[111]  If the Research Institute establishes that the American basmati comes from original Indian lines, the Indian government will claim that the USPTO should revoke the rice patent for lack of novelty.

    The Indian government’s Technology Information Forecasting and Assessment Council (“TIFAC”) believes that it has evidence to counter one of RiceTec’s patent claims for its basmati rice.[112]  The patent claims a novel process for preparing translucent rice.  TIFAC says that the Indian Patent Office granted a 1986 patent for such a process.[113]  TIFAC hopes to have the USPTO revoke RiceTec’s claim for this process along with the other patent claims.

    VIII.   Third Country Efforts

    RiceTec has registered the “Texmati” trademark in the U.S., Saudi Arabia, Ecuador, Ireland, and other countries.[114]  Saudi Arabia, India’s biggest market for basmati rice,[115] limits the term, “basmati,” to rice from India or Pakistan.  However, Saudi Arabian rice importers believe that the quality of Indian basmati rice has deteriorated.  In response, the Saudi Arabian government has enforced several phytosanitary specifications for every shipment imported from India.[116]

    The United Kingdom (“U.K.”) has a code of practice to define “basmati” as from India and Pakistan.[117]  The U.K. government refused RiceTec’s application to trademark “Texmati.”  India’s Agricultural and Processed Food Export Development Authority won a lawsuit in Greece over RiceTec’s use of the “Texmati” name.[118]

    Recently, businesses worldwide are using the term, “basmati,” or words derived from “basmati,” in trade.  This practice occurs even for products not related to rice.  Companies use trademarks containing “basmati” in many countries, including Brazil, Chile, Colombia, Jordan, Kuwait, South Africa, Spain, Taiwan, Turkey, and the United Arab Emirates (“UAE”).[119]  Companies in France, Greece, Taiwan, Jordan, Spain, and Turkey use trademarks including “basmati” for rice that does not come from the Indian sub-continent.[120]  France registered two trademarks that use the term, “basmati,” for a French company’s long-grain aromatic rice.[121]  India filed a protest at the French trademark office over these trademarks.[122]  One Thai company sells a “Basmalli” rice.[123]  In Mexico a business seeks to sell vegetables under the basmati name.[124]

    Ironically, a corporation from the world’s largest exporter of basmati rice, Pakistan, used “Guard Supreme Basmati” for an assortment of foods.[125]  The corporation changed the trademark after pressure from India’s Basmati Development Fund.[126]  The Basmati Development Fund is actively involved in opposing the other trademarks.[127]

    IX.  ossible Methods To Protect Indian Rice Industry

    India may safely grant product patents for Western inventions if India speeds up efforts to patent Indian products.[128]  What India needs to protect its indigenous plant knowledge is a combination of “scientific mumbo-jumbo and legal savvy.”[129]  The CSIR formed a team that identified 400 herbs with medicinal uses.[130]  Now the CSIR plans to seek patents for these cures to prevent foreign companies from claiming these remedies.[131]

    A. Pursue Cancellation of U.S. Patent

    The PTO seldom fully cancels a patent once granted.[132]  However, the USPTO may cancel a patent for a limited period after issuing the patent.[133]  If a patented invention is shown to not be novel, useful, or obvious, then the PTO may cancel the patent.[134]

    For RiceTec’s basmati patent, India’s best point of attack is novelty.  DNA fingerprinting may determine whether RiceTec’s rice germ plasm originates from a naturally occurring rice.[135]  If so, then India could argue that RiceTec’s rice contains no substantial differences from a naturally occurring variety, negating the rice’s novelty.  RiceTec maintains that their patented rice’s breeding material came partly from an agricultural seed repository in Idaho that is available to anyone.[136]

    If the rice provides no substantial benefits over natural basmati, India may attack the patented rice’s usefulness.  RiceTec’s patent describes the plant as being cultivated in only the Americas and the Caribbean.  RiceTec may seek to counter India’s claim of a lack of utility.  RiceTec could state that the company’s rice plant is useful because it grows in a region that does not naturally allow basmati rice to grow.

    Indian government officials and rice industry representatives have publicly stated that growers cannot cultivate basmati rice outside of the northern region of the Indian subcontinent.  Similar statements have expressed that RiceTec’s rice is the same type of rice grown in India for many years.  The Indian government should decide on whether RiceTec’s rice is the same as Indian basmati or different.  If the patent rice is identical to Indian basmati, then RiceTec’s invention is not novel.  If the rice is not the same, then India may lose a contest on novelty, but may consider geographic indication protection.

    B.   Plant Breeder Rights

    India currently provides no protection for plant varieties.  TRIPs only provides plant variety dispute settlement to countries that have national plant variety protection.  The Indian parliament unsuccessfully attempted to pass a plant variety protection law in 1994.  If India adopts a plant variety patent law soon, India may pursue international protection of indigenous plants.

    However, any protection will only pertain to future acts as TRIPs will not apply plant variety protection retroactively.  India cannot use TRIPs to contest foreign plant patents if India does not provide plant variety protection at home.  Previous Indian governments did not pass a plant protection act, despite urging by Indian professionals in the environmental, food, and patent fields.[137]  If such an Indian plant patent system existed, India would have an easier task of protecting its basmati rice industry today.

    Although this avenue is currently ineffective to thwart RiceTec’s patent, passing a plant patent act now will be valuable for future disputes.  The TRIPs agreement requires that any laws on biodiversity, plant, and microorganism protection be in place before 2000.[138]  India has not yet begun enacting such legislation.[139]

         C. Trademark, Certified Mark, Co-op Mark

    RiceTec has a registered U.S. trademark for “Texmati.”  The trademark registration claims that RiceTec has used “Texmati” for the previous twenty years.  If India cannot refute this statement, passing off is hard to prove.

    Again, TRIPs provides no dispute resolution process if a member country does not have a conflicting trademark under its own laws.  No Indian trademark exists for “basmati.”[140]  RiceTec does not have a registered trademark of “basmati” anywhere.  In the U.S., the word, “basmati,” is not registered alone, although other companies have registrations for phrases containing the term.  These registrations contain disclaimers that no claim is asserted to the word, “basmati.”  India needs to consider whether “basmati” should be trademarked in India first, then in other countries.

    If India is unsuccessful in pursuing trademark protection, certified marks or collective marks may be worth considering.  A certified mark may indicate to consumers that the rice was grown in the Himalayan region of India, as Columbia’s coffee growers demonstrate through their Juan Valdez marketing promotion.  Perhaps India’s rice exporting organizations should pursue creation of a collective mark to distinguish rice from India’s rice growers.

         D. Marketing

    Perhaps Indian basmati’s greatest disadvantage to American basmati is poor marketing by the Indian rice industry.  Today, the two basmatis do not compete directly in the U.S.  Currently U.S. supermarkets usually do not stock the Indian product.[141]  Normally, Indian basmati sells only in large bags in specialty markets.[142]  Specialty markets do not sell the American basmati.

    Hopefully, improved marketing can allow Indian basmati to prevail over American basmati.  India may benefit by aggressively competing directly with Texmati and other American basmatis.[143]  If store shelves stocked Indian and American basmatis side-by-side, consumers may choose the Indian variety.  Informal taste comparisons seem to show that Texmati’s flavor and aroma is inferior to the Indian variety.  Indeed, one culinary expert described Texmati rice as being starchier and having less aroma than Indian basmati rice.[144]  The Indian basmati rice was more fragrant and saliently superior to the Texmati rice.[145]  This important distinction, along with Indian rice being generally less expensive, in the U.S., than U.S. rice,[146] should enable India to increase revenue while diminishing RiceTec’s market share.

    A recent technological development by the Indian Agricultural Research Institute may increase India’s basmati rice production.[147]  This development, India’s first hybrid basmati rice, may give a higher yield than any current Indian basmati rice.[148]  If India’s new basmati rice successfully competes with RiceTec’s Texmati, then India’s exploitation of biotechnology could increase the Indian rice industry’s profits.  If this Indian hybrid is indeed superior to other basmatis, the Indian government can help the Indian rice industry by passing the appropriate patent legislation and pursuing international intellectual property protection for this hybrid rice.

    However, bioengineering of food products does not always spell success in the marketplace.  For example, U.S. tomato growers breed varieties of tomatoes that resist damage when hauled in trucks, stay fresh for longer time periods, and even have a square shape to improve the packing arrangement in cans.  However, these significant improvements result in a dramatic loss of flavor.

    India markets a high-yielding disease-resistant basmati rice variety, “Pusa No. 1,” that is not as fragrant or flavorful as traditional Indian basmati rice.[149]  Indian basmati rice commands a high price for its delicious traditional flavor.[150]  In the eighties Pakistan introduced high-yielding varieties to improve productivity.[151]  Some believe that the Pakistani rice industry currently receives a lower price for its basmati rice because Indian basmati rice is perceived as a higher quality basmati rice.[152]  Fearing a similar fate, Indian basmati exporters hope that the Indian government designates rices like Pusa No. 1 as “basmati-parentaged” instead of “basmati.”[153]  They hope that this will help consumers to not become confused by lower quality basmati-like rice.[154]

    Even India’s food and commerce ministries refuse to recognize Pusa No. 1 as basmati rice.[155]  Perhaps the Indian government should also seek to have foreign governments to classify RiceTec’s Texmati and similar rices as basmati-parentaged.  Such a description may assist consumers in identifying Indian rices and Indian-style rices.

         E. Do Nothing

    If India were to do nothing regarding RiceTec’s patent, India’s basmati market may suffer little, if any, damage.  RiceTec’s U.S. patent provides no advantage over Indian growers.  U.S. patent laws do not apply to India.[156]

    A patent does not grant the patentee the right to use an invention.  A patent merely grants the right to exclude others from using the invention for twenty years.  If India successfully convinces the PTO to cancel RiceTec’s patent, RiceTec would still be free to use the rice as no other patent exists to be infringed.  Canceling the patent only allows anyone to use the rice.  Also, India still can continue to sell its basmati worldwide, whether the USPTO cancels the patent or not.

    X. Suggested Future Efforts

    *    Develop home country protection for trademarks, plant variety protection, and geographic indication to take advantage of international agreements.

    *    Build computer databases to document and protect Indian plants and plant products.

    *    Employ Indian embassies to monitor patents, trademarks, and other intellectual property rights in foreign countries.

    *    Follow Malaysia’s practice of conducting research and collecting information on traditional Malay medicinal plants with the intention of patenting them for commercial purposes.[157]

    XI.     Conclusion

    Initially, RiceTec’s patent seems to misappropriate India’s national heritage in basmati rice.  However, after learning about the myriad intellectual property schemes, the extent of the Texmati patent rights seems limited.  As a practical matter quality Indian basmati rice is still superior to Texmati.  It is incumbent upon the Indian rice industry to aggressively ensure that this message reaches the consumer.  Concerted efforts between Indian business and government can effectively promote the use of India’s large pool of scientific manpower to protect indigenous plants from exclusively foreign exploitation.  This technologically-endowed work force provides potential for India to profit from improved intellectual property protection.

    [1]               Web site of U.S. Patent and Trademark Office,  , accessed March 7, 1999.

    [2]               Id.

    [3]               Id.

    [4]               35 U.S.C. § 101 (1994).

    [5]               U.S. P.T.O. web site.

    [6]               Id. at accessed March 7, 1999.

    [7]               Id.

    [8]               Id.

    [9]               Id. at accessed March 7, 1999.

    [10]             Id. at accessed March 7, 1999.

    [11]             7 U.S.C. 2321-2331, 2351-2357, 2371-2372, 2401-2404, 2421-2427, 2441-2443, 2461-2463; 2481-2486,                 2501-2504, 2531-2532, 2541-2545, 2561-2570, 2581-2583 (1994).

    [12]             Website of USDA, accessed March 14, 1999.

    [13]             Website of WTO, accessed April 12, 1999.

    [14]             Id.

    [15]             Id.

    [16]             Id.

    [17]             Id.

    [18]             Id.

    [19]             Id.

    [20]             Id.

    [21]             “UPOV” is the customary abbreviation based on the initials of its name in French: Union pour la    Protection des Obtentions Végétales.   See website of the UPOV,                 accessed  April 12, 1999.

    [22]             Website of WTO.

    [23]             Business Line, Feb. 20, 1998, Section: Business.

    [24]             Id.

    [25]             Website of WTO.

    [26]             Id.

    [27]             Id.

    [28]             Id.

    [29]             Website of UPOV,, accessed May 5, 1999.

    [30]             Id.

    [31]             Id.

    [32]             Id.

    [33]             Id.

    [34]             Id.

    [35]             BBC Summary of World Broadcasts, Part 3 Asia-Pacific, Aug. 27, 1997, Source: All-India Radio.

    [36]             New Scientist, Feb. 8, 1997, p. 11.

    [37]             Id.

    [38]             Id.

    [39]             Compass Newswire, Jun. 16, 1997, Section: In the News, “Neem Trees Set To Save Taj Mahal.”

    [40]             The Neem Foundation is based in Bombay, India.  Compass Newswire, Jun. 16, 1997, Section: In the News,               “Neem Trees Set To Save Taj Mahal.”

    [41]             New Scientist, Feb. 8, 1997, p. 11.

    [42]             The Tampa Tribune, Mar. 29, 1997, Section: Home and Garden, p. 1.

    [43]             Id.

    [44]             Bangor Daily News (Bangor, Maine), Dec. 5, 1997, “‘Miracle tree’ has promise.”

    [45]             Compass Newswire, Jun. 16, 1997.

    [46]             The Tampa Tribune, Mar. 29, 1997, Section: Home and Garden, p. 1.

    [47]             dihydro-azadirachtin

    [48]             New Scientist, Feb. 8, 1997, p. 11.

    [49]             Journal of Commerce (India), Aug. 26, 1997, Section: World Trade, p. 3A.

    [50]             Id.

    [51]             India Today, Sep. 8, 1997, Section: Science, p. 56.

    [52]             Business Line, Oct. 30, 1997, p. 3.

    [53]             The two researchers are of Indian ethnicity, Suman K. Das and Hari Har P. Cohly.  India Today, Sep. 8,      1997, Section: Science, p. 56.

    [54]             Journal of Commerce (India), Aug. 26, 1997, Section: World Trade, p. 3A.

    [55]             Id.

    [56]             Id.

    [57]             India Today, Sep. 8, 1997, Section: Science, p. 56.

    [58]             Journal of Commerce (India), Aug. 26, 1997.

    [59]             Id.

    [60]             Id.

    [61]             Id.

    [62]             Website of Law Journal Extra,, accessed May 6, 1999.

    [63]             Id.

    [64]             Id.

    [65]             Id.

    [66]             Id.

    [67]             Id.

    [68]             Id.

    [69]             Id.

    [70]             Id.

    [71]             Id.

    [72]             Id.

    [73]             Kenworthy, Leonard S., The Story Of Rice, Messner, N.Y. 1979 at 7.

    [74]             Id.

    [75]             Id. at 11.

    [76]             Id.

    [77]             Website of Worchester University,                 accessed April 12, 1999.

    [78]             Kenworthy, at 32.

    [79]             Id. at 35.

    [80]             The Virginian-Pilot, F5, August 6, 1997.

    [81]             Id.

    [82]             Id.

    [83]             FT Asia Intelligence Wire, February 18, 1998.

    [84]             Business Line, Feb. 18, 1998, Section: Business.

    [85]             Business Times (Singapore), Feb. 20, 1998, Section: Business, “India to cntest US firm’s patent for basmati                 rice.

    [86]             Website of The Economic Times,, accessed May 5,            1999.

    [87]             Id.

    [88]             A metric ton equals 1000 kilograms, approximately 2200 U.S. pounds.

    [89]             Website of The Economic Times,

    [90]             Id.

    [91]             Id.

    [92]             Id.

    [93]             The Virginian-Pilot, F5, August 6, 1997.

    [94]             Business India, April 20, 1998.

    [95]             Technically, the patent is issued in the name of the inventors, Eugenio S. Sarreal, et al., with their employer, RiceTec, recorded as the assignee.  Almost always, an empoyer holds the complete patent rights to an employee’s inventions.

    [96]             The patent is available from the database on the USPTO website,          Parser?Sect1=PTO1&Sect2=HITOFF&d=PALL&p=1&u=/netahtml/srchnum.htm&r=1&f=G&l=50&s1=’56                63484′.WKU.&OS=PN/5663484&RS=PN/5663484, accessed May 5, 1999.

    [97]             Website of Business Line,, accessed   May 5, 1999.

    [98]             Business India, April 20, 1998.

    [99]             Website of Consulta Juris (Indian Law Firm),, accessed May 5, 1999.

    [100]            Id.

    [101]            Id.

    [102]            Id.

    [103]            India Today, Sep. 8, 1997, Section: Science, p. 56.

    [104]            Id.

    [105]            Id.

    [106]            Business Line, Feb. 18, 1998, Section: Business.

    [107]            The Nation (Pakistan), April 9, 1999, available on Westlaw Service at 1999 WL 5870950.

    [108]            Id.

    [109]            Id.

    [110]            BBC Summary of World Broadcasts, Part 3 Asia-Pacific, February 18, 1998.

    [111]            New Straits Times (Malaysia), April 19, 1998, Section: National, p. 7.

    [112]            Website of Business Line,, accessed   May 5, 1999.

    [113]            Id.

    [114]            Business India, April 20, 1998.

    [115]            New Straits Times (Malaysia), April 19, 1998, Section: National, p. 7.

    [116]            Website of Economic Times (India),, accessed May              5, 1999.

    [117]            Business India, April 20, 1998.

    [118]            Id.

    [119]            Website of Economic Times (India),, accessed May              5, 1999.

    [120]            Id.

    [121]            Middle East News Items, September 13, 1998.

    [122]            Id.

    [123]            Website of India IP,, accessed May 5, 1999.

    [124]            Id.

    [125]            Website of Economic Times (India),, accessed May              5, 1999.

    [126]            Id.

    [127]            Id.

    [128]            BBC Summary of World Broadcasts, Part 3 Asia-Pacific, Aug. 27, 1997, Source:  All-India Radio.

    [129]            India Today, Sep. 8, 1997, Section: Science, p. 56.

    [130]            Id.

    [131]            Id.

    [132]            Id.

    [133]            USPTO Website,, accessed May 7, 1999.

    [134]            Id.

    [135]            New Straits Times (Malaysia), April 19, 1998, Section: National, p. 7.

    [136]            The Fort Worth Star-Telegram, May 25, 1998, p. 12.

    [137]            Website of The Hindustan Times,,          accessed April 8, 1999.

    [138]            Id.

    [139]            Id.

    [140]            San Antonio Express-News, April 12, 1998, Editorial p. 2, part G.

    [141]            Id.

    [142]            Id.

    [143]            Lundberg Family Farms of California also sells its own variety of basmati rice., accessed May 7, 1999.

    [144]            The Guardian (London), April 25, 1998, p. 55.

    [145]            Id.

    [146]            Business Line, May 23, 1998, Section: Business.

    [147]            Website of The Times of India,, accessed April 13,        1999.

    [148]            Id.

    [149]            Id.

    [150]            Id.

    [151]            Id.

    [152]            Id.

    [153]            Id.

    [154]            Id.

    [155]            Id.

    [156]            The Statesman (India), Aug. 28, 1997, Section: News.

    [157]            Bernama (Malaysian National News Agency), Oct. 9, 1998, Section: News.

    Posted in International Patent Rights | Tagged , , , , , , , , , , | Leave a comment

    Patent Validity: Offers to Sell an Invention

    © Frederic M. Douglas, January 14, 2002.  All Rights Reserved.

     Patent Validity: Offers to Sell an Invention

     Q. When does an offer to sell bar patenting an invention?

     A.  When a commercial offer of sale is madc.

     General Discussion

                 If a patented invention is sold, or even offered for sale, more than one year before the patent application date, then a U.S. patent is unavailable.  Many foreign countries refuse patents even if the offer to sell occurs only one day before filing for the patent. 

     While the definition of an actual completed sale of a patent invention is self-explanatory, one needs to determine what type of offer for sale would prevent patenting an invention after one year.  A disqualifying offer for sale would be one ordinarily considered by businesspeople to be an “offer to sell.”  Such an offer would allow the offer recipient to form a binding contract by simply saying, “I accept your offer,” if consideration is involved (usually a price). 


     Keep negotiations on a preliminary basis regarding selling items, to a third party, until after filing a patent.  Quoting price estimates, quantity estimates, and delivery time estimates should not present a problem so long as the third party clearly should not expect to be able to submit an order for the item immediately.

     Provide your patent attorney with sufficient advance notice before offering to sell, as many foreign countries will prevent us from obtaining a patent once an offer to sell is made.  Whenever an offer to sell is provided, contact your patent attorney, on the same day, so that you can intelligently decide to file a patent in the U.S. before the one year deadline.

    Examples of language that suggest a legal offer are, “I offer” and “I promise.”  Examples of language that suggest mere preliminary negotiations are, “I quote” and “are you interested.”

    Legal Mumbo-Jumbo

    The following has been discussed in Linear Technology Corp. v. Micrel, 2001 U.S. App. LEXIS 27386 (Fed. Cir., Dec. 28, 2001) and Group One Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041 (Fed. Cir., June 15, 2001), pet. cert. filed Nov 5, 2001.

    Section 102 of Title 35 of the U.S. Code provides in relevant part that “[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 . . . .” To prevail on an on-sale bar defense, an accused infringer must demonstrate by clear and convincing evidence that “there was a definite sale or offer for sale of the claimed invention prior to the critical date, defined as one year prior to the U.S. filing date to which the application was entitled.” Mas-Hamilton Group v. LaGard, Inc., 156 F.3d 1206, 1216, 48 USPQ2d 1010, 1018 (Fed. Cir. 1998) (quoting Pfaff v. Wells Elecs., Inc., 124 F.3d 1429, 1433, 43 USPQ2d 1928, 1931 (Fed. Cir. 1997), aff’d, 525 U.S. 55, 142 L. Ed. 2d 261, 119 S. Ct. 304 (1998)).

    Under Pfaff’s test, the on-sale clock begins to run when two conditions are met: (1) “the product must be the subject of a commercial offer for sale”; and (2) “the invention must be ready for patenting.” 525 U.S. at 67.

    Under Group One, interpretation of Pfaff’s commercial offer-for-sale prong thus requires the application of traditional contract law principles to the facts of the particular case. Because the on-sale bar involves questions of patent law requiring national uniformity, Group One declined to rely on the law of the particular state in which the transaction occurred, instead holding that the existence of an offer for sale should be analyzed “under the law of contracts as generally understood.” Group One, 254 F.3d at 1047, 59 USPQ2d at 1126.  Group One further instructs that the Uniform Commercial Code (“UCC”) should inform the analysis of the contractual issues. Id. (“As a general proposition, we will look to the Uniform Commercial Code (‘UCC’) to define whether, as in this case, a communication or series of communications rises to the level of a commercial offer for sale.”). Of course, the UCC is a model code–it does not itself have the force of law and no body of case law has explored its provisions. Instead, it has been enacted with modifications in the several states. Thus, the body of case law from which we must draw guidance under Group One is that of the state and federal courts interpreting their individual versions of the UCC.

    Preparation alone cannot give rise to an on-sale bar under Group One.  As noted in Group One, “contract law traditionally recognizes that mere advertising and promoting of a product may be nothing more than an invitation for offers, while responding to such an invitation may itself be an offer.” Group One, 254 F.3d at 1048, 59 USPQ2d at 1126. Accordingly, “in any given circumstance, who is the offeror, and what constitutes a definite offer, requires looking closely at the language of the proposal itself.” Id.



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