In a matter of first impression, the U.S. Court of Appeals for the Federal Circuit recently held that evidence of the foreign sale of a claimed reproducible plant selection may enable an otherwise non-enabled printed publication disclosing that plant, thus creating a 35 U.S.C. §102(b) bar. In re Elsner, Case No. 03-1569 (Fed. Cir. Aug. 16, 2004) (Lourie, J.).
Zary and Elsner each claimed, in unrelated applications, a rose and geranium variety, respectively, that had been previously described in applications published in other countries more than one year before the patent filing in the United States. Additionally, the plants had been on sale in Germany (the geranium), South Africa and Zambia (the rose), also more than a year before the U.S. filing.
The Court reasoned that because a plant patent gives the owner the right to exclude others from asexually reproducing the plant, when a publication combined with a foreign sale enables a person of skill in the art to practice asexual reproduction in a manner consistent with §161 then the "non-enabling publication and foreign sale [together] act as a §102(b) bar." In other words, if , more than one year prior to the application filing date of the patent, one of ordinary skill in the art could have obtained the foreign sold plant and the publication, and created the same plant as is disclosed in the patent application without undue experimentation, no patent should be granted or that application.
Recognizing that ordinarily foreign sales of an invention in combination with a non-enabling publication will not constitute a bar "because such a result would circumvent the established rules that neither non-enabling publications nor foreign sales can bar one’s right to a patent," the Court distinguished this situation because it perceived a difference "between plants and statutorily distinct [e.g., mechanical] inventions." The cases were remanded for a factual determination of whether "the foreign sales of the claimed plants was within the knowledge of the skilled artisan" and may therefore "be considered to provide the public with access to the…inventions."
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