Invention Conceived But Not Enabled Is Not Ready for Patenting
November 13, 2001
Last Month at the Federal Circuit - December 2001
Judges: Newman (author), Michel, and Schall
In Space Systems/Loral, Inc. v. Lockheed Martin Corp., No. 00-1269 (Fed. Cir. Nov. 13, 2001), the Federal Circuit reversed a district court’s SJ that Space Systems/Loral, Inc.’s (“Space Systems”) U.S. Patent No. 4,537,375 (“the ‘375 patent”) was invalid for violation of the on-sale bar under 35 U.S.C. § 102(b) and remanded the case for further proceedings.
The ‘375 patent is directed to an attitude-control system for maintaining the position and orientation of a satellite in orbit. When a satellite in orbit drifts out of its position and orientation, a corrective maneuver called “prebiasing” is performed using data stored from previous maneuvers to return the satellite back to its correct position and orientation.
On March 19, 1982, before the ‘375 patent was filed, the inventor had sent to a prospective buyer an engineering document that described his prebiasing system. Also included in the document were rough drawings of the system and an estimate for developing the prebiasing system. When the inventor disclosed the document to the buyer, he was uncertain whether his prebiasing system could be made to work; it was not until after many months of development and testing that he determined the system would work.
The district court had held that the March 19, 1982, document was a commercial offer for sale more than a year before the filing date of the ‘375 patent and an invalidating, on-sale bar under 35 U.S.C. § 102(b). The district court had also concluded that the system was ready for patenting as soon as the inventor had conceived it.
The Federal Circuit reversed the district court’s ruling, holding that the district court had misapplied the law of the on-sale bar when it ruled that the prebiasing system claimed in the ‘375 patent was ready for patenting upon conception.
The Federal Circuit explained that for an invention to be ready for patenting, an inventor must be able to prepare a patent application that complies with the enablement requirement of 35 U.S.C. § 112. It explained further that although conception can occur before the inventor has verified that his idea will work, when development and verification are needed to comply with the enablement requirement of 35 U.S.C. § 112, the invention is not ready for patenting. Accordingly, the Court held that because at the time the invention was conceived and disclosed it had not yet been enabled, its disclosure was not an on-sale bar under 35 U.S.C. § 102(b).