In re Carlson (JWB)

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The Case

  • Bradley Carlson appeals decision of the PTO Board of Patent Appeals and Interferences from 1/9/1992, affirming rejection in reexamination of the claim (unpatentable under 35 USC 103)
  • Issue of whether or not German Geschmacksmuster had an invention that constituted “patented in a foreign country” under Section 102 and thus may be considered prior art, and whether Carlson’s invention is patentable in light of Geschmacksmuster
  • patent involved ornamental design for a dual compartment bottle, applied for on Nov 19, 1984
  • April 6, 1990 PTO granted request to reexamine Carlson’s application because Revlon, Inc. and Smiletote, Inc. filed a patent request similar (?)


  • Rejected Carlson’s argument that Geschmacksmuster should not qualify as prior art under 102
  • Found that Carlson’s design (Des. 289,855) would have been obvious under 103
  • Geschmacksmuster was issued less than 12 months prior to Carlson’s application, 102 is not applicable


  • 35 USC 102(a):

“entitled to a patent under U.S. law unless the same invention was patented by another person in a foreign country prior to the invention thereof by the U.S. applicant…further bar to patentability arises if an applicant for a U.S. patent has been granted a patent in a foreign country on the same invention more than twelve months prior to the date the patent application is filed in the United States”

  • Because a Geschmacksmuster conveys substantial and exclusive rights in the design, the Board in Weiss held that a Geschmacksmuster qualifies as prior art under section 102(d)
  • 102(a) relates to potential prior art in the form of patents issued in a foreign country and held by persons other than the US applicant
  • 102(d) specifies the time within which the owner of a foreign patent must apply for a US patent on the same invention
  • the distinction does not bar Geschmacksmuster
  • because the Geschmacksmuster fully discloses the design upon which German law conferred the exclusive rights attendant to the registration, the Geschmacksmuster qualifies as a foreign patent for purposes of section 102(a)

Class Notes

  • Section 102(a) patented (or published) in a foreign country before US application
  • Section 102(d) if patent obtained in foreign country more than one year prior to US application date, bar
  • Utility patents (normal engineering, etc) and Design patents (“new, original, ornamental design for an article of manufacture”)
  • PTO reexamining Carlson’s design patent, when new evidence was brought up regarding prior art, the main which being this German patent (Geschmacksmuster)
  • Affirm examiner’s rejection and Board of Appeals’ rejection
  • Someone else had invented bottle and had it registered in Germany, which led to a publication of the design
  • However, as long as the exclusive rights of the foreign government were substantial and exclusive, they need not be as exclusive as US patent protection
  • “Carlson argues that the embodiment of foreign protection must take a form that fully discloses the nature of the protected design”
  • While it creates a burden of discovery (to find every possible prior art, as Carlson complained of), such a burden is by law imposed
    • for the sake of the public, because it has already been disclosed