In vacating a decision by the U.S. Patent and Trademark Office Board of Appeals & Interferences, the U.S. Court of Appeals for the Federal Circuit held that granting a royalty bearing license to use a method and conveying technical know-how related to implementing the method does not place the method on sale because the method is not carried out as a result of the transaction. In re Kollar, Case No. 01-1640 (Fed. Cir., April 11, 2002).
Redox Technologies, Inc., the assignee of Kollar, filed a patent application directed to a process for preparing a dialkyl peroxide. Approximately 15 years prior to its filing date, Redox reduced the invention to practice and entered into an agreement with Celanese Corporation for the purpose of "conducting research and development (R&D) in the Field … with a goal to achieving, by the end of 5 R&D years, Celanese approval for a commercial plant in the Field." In the agreement, Redox, in exchange for a series of annual royalty payments, licensed to
