Insights

The Federal Circuit in Sanho Corp. v. Kaijet Technology International Limited, Inc., No. 2023-1336 (Fed. Cir. July 31, 2024) recently addressed the prior art exception of a “public disclosure” under 35 USC § 102(b)(2)(B).  Affirming a decision of the U.S. Patent Trial and Appeals Board (“PTAB”), the court held that “publicly disclosed” is only satisfied if the invention was made available to the public, and a non-confidential but otherwise private sale of an invention is not a sufficient “public disclosure”.  This case provides a cautionary tale that disclosing or selling an invention before filing a patent application is fraught with risk.

It seems most everyone has been closely monitoring Taco Bell’s cancellation proceedings directed to federal trademark registrations covering the TACO TUESDAY trademark.  On July 15, 2023, one of the registrants, Spicy Seasonings, LLC, withdrew its registration after decades of ownership, supporting Taco Bell’s allegations that the phrase is generic and therefore not protectable as a trademark.