Application of Talbott

• Decision Date: 01 July 1971
• Docket Number: Patent Appeal No. 8519.
• Citation: 170 USPQ 281,443 F.2d 1397
• Parties: Application of Yorck Joachim TALBOTT.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

170 USPQ 281, 443 F.2d 1397 (1971)

Application of Yorck Joachim TALBOTT.

Patent Appeal No. 8519.

United States Court of Customs and Patent Appeals.

July 1, 1971.

Michael S. Striker, New York City, attorney of record, for appellant.

S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. Raymond E. Martin, Washington, D. C., of counsel.

Before RICH, ALMOND, BALDWIN, and LANE, Associate Judges, and LANDIS, Judge, United States Customs Court, sitting by designation.

BALDWIN, Judge.

This appeal brings before us for the first time the question whether the registration of an industrial design (Geschmackmuster) under the laws of Germany may be considered for purposes of applying the statutory time bar of 35 U.S.C. §§ 102(d) and 172 against an application for a United States design patent on the same subject matter. Before us also, similarly for the first time, is the ancillary issue, to be decided only if the first stated question is answered in the affirmative, whether an applicant may avoid the statutory bar involved by maintaining the subject matter of the German grant in secrecy, i. e., not available for public inspection, until after his United States application has been filed.

These issues arise out of the affirmance, by the Patent Office Board of Appeals, of the rejection of the conventional single claim in appellant's application¹ for a United States design patent. The facts are reasonably straightforward, and, for the most part, are not in dispute.

As we understand it, the German statute pertinent to the issue before us is not part of the general laws dealing with patents in that country, but rather provides only for the grant of an exclusive right against imitation to creators of new and original industrial designs, or, "Geschmackmusters". This grant may be obtained upon registration of the design and deposit of a copy thereof with the proper authority. The grant is effective from the day the application for registration is filed.

Appellant filed such an application for registration of his design under German law on July 5, 1965, some six months and one week before he filed the present application in the United States Patent Office. Noting the provision in 35 U.S.C. § 172 that, in the case of designs, the time specified in section 102(d) of the Patent Act shall be six months, the examiner rejected appellant's claim as being barred from patentability under the provisions of the latter section.² He was sustained on this point by the Board of Appeals.

Against this rejection, appellant has consistently taken the approach that it is error to consider the Geschmackmuster registration obtained in Germany as satisfying the requirement of section 102(d) that the claimed invention be "patented * * * in a foreign country." He asserts first that there is a substantial difference in the nature of the rights obtained by the German grant as opposed to those inhering in the grant of a United States design patent. This difference, he argues, militates against characterizing Geschmackmuster rights as "patent" rights. Such rights, being much more in the nature of copyright rather than patent rights, could not have been contemplated, he urges, as within the scope of section 102(d).

As a second point, appellant refers to the fact that his design registration was kept secret by the German authorities at his request and as permitted by the German law. Under those circumstances, he maintains, even if the foreign registration is held to be a "patent" under section 102(d), the logic of prior cases³ holding that such secret "patents" may not be used as references under 35 U.S. C. § 102(a) and (b) requires that his secret "patent" be similarly excluded.

As noted by the board in its opinion below, the issues raised by appellant here were similarly raised in Ex parte Weiss, 159 USPQ 122 (Pat.Off.Bd.App. 1967) and fully discussed in the opinion in that case. We have also been referred to two additional Board of Appeals opinions which have been published dealing with the same issue. Ex parte Einfalt, 155 USPQ 529 (1966) and Ex parte App. No. _______, 866 O.G. 16 (1968). Our consideration of the issues raised, in light of those opinions and further aided by the able briefs of both parties, has satisfied us that the Patent Office position is correct and, accordingly, the decision below will be sustained.

Rather than attempt to detail our own reasons for agreeing with the Patent Office, we shall adhere to and adopt as our own, the reasoning set out so...