METHOD OF COOKING BACON MAY HAVE BEEN PATENTABLE, EXCEPT FOR IT BEING INDEFINITE!

A patent was issued for a method of cooking bacon, where the cooked bacon was sold to consumers.  Plaintiffs sued defendant infringer for patent infringement.  Defendants counterclaimed that the patent was indefinite.  The claims language that was indefinite was in the preamble to claims 1 and 3 which recites “[a] process … to produce a pre-cooked sliced bacon product resembling a pan-fried bacon product.”  (as distinguished from  microwaved bacon)  The issued patent did not define or identify specific criteria for measuring or determining the texture, mouth feel, bite, appearance, or color of pan-fried bacon.  The district therefore ruled that the bacon patent is invalidated due to indefiniteness.

Two interesting points, first, the method of cooking bacon would have been patentable, if the patent specification defined or identified specific criteria for measuring or determining the texture, mouth feel, bite, appearance, or color of pan-fried bacon.  Second, the preamble to the claims, were considered limiting on the rest of the claim.  Many attorneys have been taught that preambles are not limiting.  The case is HIP Inc. v. Hormel Foods Corporation et al., case number 1:18-cv-00615 (D. Del.), and can be found here.

Supreme Court rules that “secret” sales triggers the on-sale bar to patentability!

On January 22, 2019, the US Supreme Court decided Helsinn Healthcare S. A. v. Teva Pharmaceuticals USA, Inc.  The main issue in that case was whether a “secret” sale of the invention triggers the 1 year time period to apply for a US patent application.

The America Invents Act (AIA) amended 35 U.S.C. §102 as follows:  “A person shall be entitled to a patent unless . . . the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” The underlined portion was added by the AIA.

Plaintiff Helsinn argued, that the addition of the phrase “or otherwise available to the public” in the AIA statute altered the meaning of on sale in such a way that if an invention’s sale was confidential (and, therefore, not available to the public), the invention was not on sale under the AIA statute. The Supreme Court disagreed.

Thus, inventors and patent owners should be aware that any sale, secret or public, triggers the on-sale bar, and a patent application must be filed within 1 year of the first sale, or public disclosure of the invention—otherwise the invention is ineligible for patent protection.  Stated another way, PATENT EARLY!

The case can be read here.