Case Note: Rosaire v. Baroid Sales
Author: Nandan Pendsey, IP Attorney, San Diego, USA
Issue
Does the earlier experiment by Gulf Corp. invalidate the patents of Rosaire as the inventions were known or used?
Does the earlier experiment by Gulf Corp. invalidate the patents of Rosaire as the inventions were known or used?
Holding
Yes, as the earlier experiments constituted prior knowledge and use according to Sec 102 (a), they invalidated the patents.
Rule
102 (a)
102 (a)
Facts
Rosaire and Horvitz patents relate to the methods of prospecting for oil or other hydrocarbons. The methods claimed involve the steps of taking a number of samples of soil from formations which are not themselves productive of hydrocarbons, either over a horizontal area or a vertical down. Rosaire alleged that Baroid was infringing its patent. Baroid claimed invalidity on the ground of anticipation. Rosaire admitted that Teplitz for the Gulf Oil Corporation conceived of the idea of extracting and quantitatively measuring entrained or absorbed gas from the samples of rock before him.
Rosaire and Horvitz patents relate to the methods of prospecting for oil or other hydrocarbons. The methods claimed involve the steps of taking a number of samples of soil from formations which are not themselves productive of hydrocarbons, either over a horizontal area or a vertical down. Rosaire alleged that Baroid was infringing its patent. Baroid claimed invalidity on the ground of anticipation. Rosaire admitted that Teplitz for the Gulf Oil Corporation conceived of the idea of extracting and quantitatively measuring entrained or absorbed gas from the samples of rock before him.
Analysis
Rosaire claims that Gulf Corp.’s experiment was unsuccessful and they had abandoned their invention. Unsuccessful experiment, later abandoned cannot invalidate subsequent patent and does not negate novelty in that. Though this proposition is true the court held that nevertheless, the existence and operation of a machine, abandoned after its completion and sufficient use to demonstrate its practicability, is evidence that the same ideas incorporated in a later development along the same line do not amount to invention.
Rosaire claims that Gulf Corp.’s experiment was unsuccessful and they had abandoned their invention. Unsuccessful experiment, later abandoned cannot invalidate subsequent patent and does not negate novelty in that. Though this proposition is true the court held that nevertheless, the existence and operation of a machine, abandoned after its completion and sufficient use to demonstrate its practicability, is evidence that the same ideas incorporated in a later development along the same line do not amount to invention.
On the issue of whether the work of Teplitz was an unsuccessful experiment or not, the trial court made a finding of fact that Gulf Corp. spent more than a year in the oil fields around Palestine, Texas taking and analyzing samples both by horizontal as well as vertical methods. The work done was a successful experiment and it was performed under ordinary conditions without any attempt to conceal or exclude the public. The work was not carried forward or the program was suspended but this was not done to test the worth of the method but was done to examine the data already produced.
As the basic principle underlying patent laws is the enrichment of art, no patent can be given to invention which was already known or used by the public. As there is no evidence of concealment or abandonment and as the work done by Gulf Corp. constitutes prior knowledge or use, patent invalidated.
Baroid claimed invalidity on the argument of anticipation. Rosaire and Horvitz patents cope with to the methods of prospecting for oil or other hydrocarbons. The methods claimed entangle the steps of taking a number of samples of soil from formations which are not themselves ingenious of hydrocarbons, either over a horizontal area or a vertical down. Rosaire admitted that Teplitz for the Gulf Oil Corporation conceived of the stance of extracting and quantitatively measuring entrained or absorbed gas from the samples of destroyed before him. Rosaire so-called that Baroid was infringing its patent.