Chapter §7.07 Abandonment Under §102(c)

• Jurisdiction: United States

§7.07 Abandonment Under §102(c)

Judicial decisions invalidating a patent under 35 U.S.C. §102(c) (2006) are rare. This is because subsection (c) is an anachronism; it is largely a historic holdover from the time when loss of right to a patent was viewed as being triggered by an inventor's own affirmative act of abandonment or dedication of her invention to the public.⁷³² The on sale and public use bars as encompassed within 35 U.S.C. §102(b) (2006) initially developed as two specific types of conduct giving rise to a general concept of abandonment, which general concept is still reflected in §102(c).⁷³³

The statutory bars of §102(b) are presently understood as reflecting primarily a delay rationale, and may be triggered by persons other than the inventor, as discussed supra. In contrast, only an affirmative act of the inventor can trigger an abandonment under §102(c). The continued presence of §102(c) in the pre-AIA Patent Act most likely indicates that patent rights can theoretically be lost at any time, even within the §102(b) grace period.⁷³⁴ Section 102(c) would be triggered by the relatively unlikely occurrence of an overt, intentional statement of abandonment of patent rights on which others are entitled to rely.

For example, assume that an inventor discovered a 100% effective vaccine against HIV, and thereafter held a press conference announcing to the world that the invention would be made freely available to all and would not be patented. If the inventor were to change her mind the following day and file a U.S. patent application claiming the vaccine, §102(c) would bar the grant of a patent.⁷³⁵

What is involved in 35 U.S.C. §102(c) (2006) is not the inventor's abandonment of the affirmative right to practice her invention. Rather, statutory abandonment refers to a waiver or forfeiture of the right to patent protection on (i.e., the right to exclude others from practicing) the invention. As the Court of Customs and Patent Appeals (CCPA) explained in In re Gibbs,⁷³⁶

We are not at all concerned, therefore, with any abandonment of the invention in the sense of the thing invented but only, in the words of the §102 heading, with "loss of right to patent," an inability to obtain that incorporeal property right (35 USC 261) which is the right to exclude others from making, using or selling the invention (35 USC 154). ⁷³⁷

The Gibbs court considered whether abandonment of the right to exclude others may be inferred from an inventor's failure to act...