On-sale bar
Encyclopedia
The on-sale bar of 35 U.S.C.
102 is a United States patent law
term that means if an invention
has been for sale for over one year, it is no longer patentable
.
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or
The on-sale bar of 35 U.S.C. 102(b) is triggered if the invention is both
Traditional contract law principles are applied when determining whether a commercial offer for sale has occurred. See Linear Tech. Corp. v. Micrel
, Inc., 275 F.3d 1040, 1048, 61 USPQ
2d 1225, 1229 (Fed. Cir. 2001), petition for cert. filed, 71 USLW 3093 (Jul. 03, 2002) (No. 02-39); Group One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041,1047, 59 USPQ2d 1121, 1126 (Fed. Cir. 2001) ("As a general proposition, we will look to the Uniform Commercial Code
('UCC') to define whether a communication or series of communications rises to the level of a commercial offer for sale.").
The on-sale bar is an extraordinarily (some would argue needlessly) complex body of patent law in all but the simplest cases . For instance, licenses are normally not considered a sale, even when a sample product is transferred as part of the license, but a computer software license is considered a barring sale even if the patent claims
are method claims. The normal standard of reduction to practice (which requires recognizing the invention) has been ignored in several cases, for example an offer for sale of a waste disposal machine which, if accepted would have practiced a later invention due to the special nature of the waste, was considered a barring sale even though the invention had not even been conceived yet and the sale did not take place.
There is no joint-development exception to the on-sale bar, meaning that the on-sale bar in many cases is triggered when the invention is "ready for patenting," which can occur when an inventor is working alone at a drafting table. The ready-for-patenting standard is judged retrospectively in an adversarial setting, so even if an invention was far too premature to have been put into a patent application, with details missing, it may still be deemed to have been "ready for patenting." Moreover, an inadequate disclosure cannot provide priority for a continuation-in-part application, so an inventor who fears the on-sale bar and files a premature patent application may not be able to rescue it later.
United States Code
The Code of Laws of the United States of America is a compilation and codification of the general and permanent federal laws of the United States...
102 is a United States patent law
United States patent law
United States patent law was established "to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;" as provided by the United States Constitution. Congress implemented these...
term that means if an invention
Invention
An invention is a novel composition, device, or process. An invention may be derived from a pre-existing model or idea, or it could be independently conceived, in which case it may be a radical breakthrough. In addition, there is cultural invention, which is an innovative set of useful social...
has been for sale for over one year, it is no longer patentable
Patentability
Within the context of a national or multilateral body of law, an invention is patentable if it meets the relevant legal conditions to be granted a patent...
.
35 U.S.C. 102(b)
A person shall be entitled to a patent unless -(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or
MPEP 2133.03(b) "On Sale" [R-2] - 2100 Patentability
An impermissible sale has occurred if there was a definite sale, or offer to sell, more than 1 year before the effective filing date of the U.S. application and the subject matter of the sale, or offer to sell, fully anticipated the claimed invention or would have rendered the claimed invention obvious by its addition to the prior art. Ferag AG v. Quipp, Inc., 45 F.3d 1562, 1565, 33 USPQ2d 1512, 1514 (Fed. Cir. 1995).The on-sale bar of 35 U.S.C. 102(b) is triggered if the invention is both
- the subject of a commercial offer for sale not primarily for experimental purposes and
- ready for patenting. Pfaff v. Wells Elecs., Inc.Pfaff v. Wells Electronics, Inc.Pfaff v. Wells Electronics, Inc., 525 U.S. 55 , was a decision by the Supreme Court of the United States that determined what constituted being "on sale" for the purposes of barring the grant of a patent for an invention.-Background of the case:...
, 525 U.S. 55, 67, 48 USPQ2d 1641, 1646-47 (1998). Ready for patenting means either that the invention was reduced to practiceReduction to practiceIn United States patent law, the reduction to practice is a concept meaning the embodiment of the concept of an invention. The date of this embodiment is critical to the determination of priority between inventors in an interference proceeding....
or that enabling disclosures existed.
Traditional contract law principles are applied when determining whether a commercial offer for sale has occurred. See Linear Tech. Corp. v. Micrel
Micrel
Micrel Incorporated, founded in 1978, is a global manufacturer of integrated circuits with corporate headquarters in San Jose, California. Micrel has been a publicly traded corporation since December 1994...
, Inc., 275 F.3d 1040, 1048, 61 USPQ
United States Patents Quarterly
The United States Patents Quarterly is a United States legal reporter published by the Bureau of National Affairs in Washington, D.C. The USPQ covers intellectual property cases including patents, copyrights, trademarks, and trade secrets, from 1913 to the present.The USPQ reports case law from...
2d 1225, 1229 (Fed. Cir. 2001), petition for cert. filed, 71 USLW 3093 (Jul. 03, 2002) (No. 02-39); Group One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041,1047, 59 USPQ2d 1121, 1126 (Fed. Cir. 2001) ("As a general proposition, we will look to the Uniform Commercial Code
Uniform Commercial Code
The Uniform Commercial Code , first published in 1952, is one of a number of uniform acts that have been promulgated in conjunction with efforts to harmonize the law of sales and other commercial transactions in all 50 states within the United States of America.The goal of harmonizing state law is...
('UCC') to define whether a communication or series of communications rises to the level of a commercial offer for sale.").
The on-sale bar is an extraordinarily (some would argue needlessly) complex body of patent law in all but the simplest cases . For instance, licenses are normally not considered a sale, even when a sample product is transferred as part of the license, but a computer software license is considered a barring sale even if the patent claims
Claim (patent)
Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application...
are method claims. The normal standard of reduction to practice (which requires recognizing the invention) has been ignored in several cases, for example an offer for sale of a waste disposal machine which, if accepted would have practiced a later invention due to the special nature of the waste, was considered a barring sale even though the invention had not even been conceived yet and the sale did not take place.
There is no joint-development exception to the on-sale bar, meaning that the on-sale bar in many cases is triggered when the invention is "ready for patenting," which can occur when an inventor is working alone at a drafting table. The ready-for-patenting standard is judged retrospectively in an adversarial setting, so even if an invention was far too premature to have been put into a patent application, with details missing, it may still be deemed to have been "ready for patenting." Moreover, an inadequate disclosure cannot provide priority for a continuation-in-part application, so an inventor who fears the on-sale bar and files a premature patent application may not be able to rescue it later.