Kathawala, In re

• Decision Date: 09 November 1993
• Docket Number: No. 93-1129,93-1129
• Citation: 9 F.3d 942,28 USPQ2d 1785
• Parties: , 28 U.S.P.Q.2d 1785 In re Faizulla G. KATHAWALA.
• Court: U.S. Court of Appeals — Federal Circuit

Page 942

9 F.3d 942

62 USLW 2339, 28 U.S.P.Q.2d 1785

In re Faizulla G. KATHAWALA.

No. 93-1129.

United States Court of Appeals Federal Circuit.

Nov. 9, 1993.

Melvyn M. Kassenoff, Sandoz Corp., of East Hanover, New Jersey, argued for appellant. With him on the brief were Robert S. Honor and Richard E. Vila.

Fred E. McKelvey, Sol., Office of Sol., of Arlington, VA, argued for appellee. With him on the brief was Teddy S. Gron. Of counsel were Albin F. Drost, Richard E. Schafer and Lee E. Barrett.

Before LOURIE and RADER, Circuit Judges, and WOODS ^*, District Judge.

LOURIE, Circuit Judge.

Applicant Faizulla G. Kathawala ¹ appeals from the July 17, 1992 decision of the U.S. Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences, Appeal No. 88-1921, affirming the examiner's final rejection of claims 1, 2, and 19-21 of application Serial No. 772,288, entitled "Indole Analogs of Mevalonolactone and Derivatives Thereof," as unpatentable under 35 U.S.C. Sec. 102(d) (1988) over Greek Patent 79,042 and Spanish Patent 443,668. ² We affirm.

BACKGROUND

Kathawala's invention relates to a group of new compounds having the ability to inhibit a key enzyme in the biosynthesis of cholesterol. Claims 1 and 2 of the application are directed to the compounds per se, claim 19 is directed to a pharmaceutical composition containing the compounds, and claims 20 and 21 are directed to methods of using the compounds for inhibition of cholesterol biosynthesis and treatment of atherosclerosis.

Kathawala filed the instant application on April 11, 1985, more than one year after he filed counterpart applications in Greece and Spain on November 21, 1983. Kathawala initially filed an application in the U.S. on November 22, 1982, claiming most of the same compounds as in the instant application. When he filed abroad, however, in 1983, he expanded his claims to include certain ester derivatives of the originally claimed compounds. It is claims to those esters, which Kathawala made the subject of a subsequent continuation-in-part application, the application now before us, that are at issue here.

Both foreign patents issued prior to the instant application in the U.S., the Greek patent on October 2, 1984, and the Spanish patent on January 21, 1985. The specifications of the Greek and Spanish patents are substantially the same as that of the U.S. application, both disclosing the same compounds, compositions, and methods of use. The Greek patent contains claims directed to the compounds, compositions, methods of use, and processes for making the compounds. The Spanish patent contains only "process of making" claims.

Because Kathawala filed his U.S. application claiming the esters more than one year after he filed his corresponding foreign applications, and those foreign applications issued as patents prior to the U.S. filing date, the examiner rejected the claims under 35 U.S.C. Sec. 102(d), which precludes issuance of a patent when

the invention was first patented or caused to be patented ... by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent ... filed more than twelve months before the filing of the application in the United States.

35 U.S.C. Sec. 102(d). The examiner rejected each of the claims over the Greek patent, and claims 1 and 2, the compound claims, over the Spanish patent.

Kathawala appealed to the Board, arguing with respect to the rejection over the Greek patent that his invention was not "patented" in Greece under section 102(d) because the compound, composition, and method of use claims in the Greek patent were invalid under Greek law as directed to non-statutory subject matter. Kathawala also argued that the examiner's rejection based on the Spanish patent was erroneous because, although that patent issued and was enforceable prior to the U.S. filing date, the specification was not publicly available until August 1, 1985, the date on which the notice of the Spanish patent grant was officially published, which was after the U.S. filing date. Thus, Kathawala argues, the compositions were not "patented" for purposes of section 102(d). Kathawala further argued that the "invention ... patented" in Spain was not the same "invention" claimed in the U.S. application because the Spanish patent claimed processes for making the compounds, and claims 1 and 2 were directed to the compounds themselves.

The Board affirmed the examiner's rejections over both foreign patents. With regard to the Greek patent, the Board concluded that the validity of the Greek claims was irrelevant for purposes of section 102(d), the controlling fact being that the Greek patent issued containing claims directed to the same invention as the U.S. application. With regard to the Spanish patent, the Board concluded that Kathawala's invention was "patented" when the patent was granted and Kathawala's rights became fixed. The Board also concluded that the "invention ... patented" in Spain was the same "invention" claimed in the U.S. application. Kathawala appealed.

DISCUSSION

The issue before us thus is whether the Board properly determined that the Greek and Spanish patents bar issuance of Kathawala's U.S. application under section 102(d). We must interpret the phrase "invention ... patented" under Sec. 102(d) and determine whether Kathawala's "invention" was first "patented" in Greece and in Spain within the meaning of that provision.

Statutory interpretation is a question of law which we review de novo. In re Carlson, 983 F.2d 1032, 1035, 25 USPQ2d 1207, 1209 (Fed.Cir.1992) (citations omitted). Turning first to the Greek patent, there is no dispute that it contains claims directed to the same invention as that of Kathawala's U.S. application. Kathawala argues, however, that his invention was not first "patented" in Greece under section 102(d) because the compound, composition, and method of use claims are invalid under Greek patent law as directed to non-statutory subject matter. According to Kathawala, only his process claims are valid under Greek law. Kathawala thus argues that the validity of his claims under Greek patent law determines whether his invention was "patented" in Greece within the meaning of section 102(d) prior to his U.S. filing date.

We disagree. Even assuming that Kathawala's compound, composition, and method of use claims are not enforceable in Greece, a matter on which we will not speculate, the controlling fact for purposes of section 102(d) is that the Greek patent issued containing claims directed to the same invention as that of the U.S. application. When a foreign patent issues with claims directed to the same invention as the U.S. application, the invention is "patented" within the meaning of section 102(d); validity of the foreign claims is irrelevant to the section 102(d) inquiry. This is true irrespective of whether the applicant asserts that the claims in the foreign patent are invalid on grounds of non-statutory subject matter or more conventional patentability reasons such as prior art or inadequate disclosure.

Kathawala does not dispute that the Greek patent issued containing claims directed to the same invention as that of his U.S. application. Kathawala sought and obtained the claims contained in the Greek patent and cannot now avoid the Sec. 102(d) bar by arguing that that which he chose to patent abroad should not have been allowed by the foreign patent office. Acceptance of such a position, as the Board stated, would place an " 'unrealistic burden' on the courts and PTO to resolve 'esoteric legal questions which may arise under the patent laws of numerous foreign countries[.']" Slip op. at 21. The PTO should be able to accept at face value the grant of the Greek patent claiming subject matter corresponding to that claimed in a U.S. application, without engaging in an extensive exploration of fine points of foreign law. The claims appear in the Greek patent because the applicant put them there. He cannot claim exemption from the consequences of his own actions. The Board thus correctly concluded that the validity of the Greek claims is irrelevant for purposes of section 102(d). Accordingly, the Board properly affirmed the examiner's rejection over the Greek patent.

Also before us is the rejection of claims 1 and 2, the compound claims, based on the Spanish patent. Kathawala argues that this rejection was erroneous for two reasons. First, Kathawala asserts that although the Spanish patent was granted and enforceable prior to the U.S. filing date, it was not published until after that date. Kathawala thus argues that his invention was not "patented" in Spain until the publication date of the Spanish patent. Second, Kathawala argues that the "invention" of claims 1 and 2, the compounds themselves, is not the same "invention ... patented" in Spain under section 102(d), that compositions are a separate invention from processes.

We reject both arguments of Kathawala. With regard to the first argument, Kathawala concedes that the Spanish patent issued and was enforceable on January 21, 1985, a date prior to the U.S. filing date. Kathawala nevertheless asserts that the effective date of a foreign patent for purposes of Sec. 102(d), the date on which an invention is "patented," is not the date the foreign patent issues and becomes enforceable, but the date on which it becomes publicly available.

The law on this issue was well established by our predecessor court in In re Monks, 588 F.2d 308, 200 USPQ 129 (CCPA 1978), and In re Talbott, 443 F.2d 1397, 170 USPQ 281 (CCPA 1971). In Monks, the court considered the date on which an invention was "patented" in Great Britain under Sec. 102(d), and inquired whether the effective date for purposes of that section was the date on which the complete specification was published, a date prior to the U.S. filing date, or the date on which...