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A CASE STUDY OF INOPERABLE INVENTIONS: WHY IS THE USPTO PATENTING PSEUDOSCIENCE? - page 15 / 39

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2006:1275

Inoperable Inventions

1289

position that the invention was presumed to be operable under these circumstances. 113

The court then proceeded to divide the world of inventions into three distinct classes.114 The first class included those inventions which functioned according to known scientific principles.115 In such cases, no further evidence was required to create a presumption of operability. The second class included those inventions that were in conflict with known scientific principles.117 These types of patent applications create a “presumption of inoperativeness . . . so strong that very clear evidence is required to overcome it.”118 The third class included those inventions contradicting scientific principles that cannot be tested at all.119 The court implied that, for inventions that fell into the third class, only a demonstration that the invention actually worked and an explanation of the principles of operation would suffice to overcome the presumption of inoperability. 116 120

Other pre-Langer cases seem to confirm the idea that incredible claims will, by their very nature, shift the burden of proof to the applicant to demonstrate those claims. In Fregeau v. Mossinghoff, a case regarding a magnet that allegedly improved the taste of wine, the patent applicant conceded that there was a prima facie case for inoperability simply because of the nature of the claims made by the inventor.122 The In re Citron court found that the incredible nature of the claim (a cure for cancer) automatically shifted the burden of persuasion to the applicant.123 The In re Marzocchi court proposed that “there may be times when the well-known unpredictability of chemical reactions will alone be enough to create a reasonable doubt as to the accuracy of a particular broad statement.” 121 124

The best that can be said of the dicta of Chilowsky, in light of the modern Langer test, is that perhaps the USPTO has a lower threshold of evidence to meet in making a prima facie case for inoperability in

113.

Id.

114. 115. 116. 117. 118. 119. 120. 121.

See id. Id. Id. Id. Id. Id. Id. Proof that lack of patent protection is not a bar to marketing can be found

at The Wine Clip, http://www.thewineclip.com (last visited Nov. 1, 2006) (marketing an unpatented version of the invention litigated in Fregeau).

122. 123. 124.

776 F.2d 1034, 1038 (Fed. Cir. 1985). 325 F.2d 248, 253 (C.C.P.A. 1963). 439 F.2d 220, 223 (C.C.P.A. 1971).

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