Foreign Sales May Enable an Otherwise Non-Enabling Publication

In a matter of first impression, the U.S. Court of Appeals for the Federal Circuit recently held that evidence of the foreign sale of a claimed reproducible plant selection may enable an otherwise non-enabled printed publication disclosing that plant, thus creating a 35 U.S.C. §102(b) bar. In re Elsner, Case No. 03-1569 (Fed. Cir. Aug. 16, 2004) (Lourie, J.).

Zary and Elsner each claimed, in unrelated applications, a rose and geranium variety, respectively, that had been previously described in applications published in other countries more than one year before the patent filing in the United States. Additionally, the plants had been on sale in Germany (the geranium), South Africa and Zambia (the rose), also more than a year before the U.S. filing.