In re Kathawala

Faizulla Kathawala sought to patent a group of compounds that could inhibit an enzyme in the biosynthesis of cholesterol. Kathawala filed patent applications in Greece and Spain on November 21, 1983, disclosing four elements: (1) the compounds themselves, (2) compositions, (3) methods of use, and (4) processes for making the compounds. The Greek application claimed all four, but the Spanish application claimed only the processes. The Greek patent issued on October 2, 1984; the Spanish patent issued on January 21, 1985. On April 11, 1985, Kathawala filed a United States patent application for the invention, claiming all four disclosures. The U.S. Patent and Trademark Office (PTO) board of appeals rejected the application because a statutory provision prohibited the filing of an American patent more than one year after the filing of a foreign patent on the same invention. Kathawala appealed to the United States Court of Appeals for the Federal Circuit. Kathawala argued that the invention was not actually patented in Greece because Greek law only allowed for processes to be claimed (as opposed to the other three disclosures). Kathawala also argued that the Spanish patent did not become effective on the date of issue but rather on a later publication date. Finally, Kathawala argued that Spanish application did not claim the same invention as the American application because the Spanish application only claimed processes.