Fletcher YoderA promise to buy goods from a supplier separate from a patented invention can qualify as the requisite consideration for a valid contract to satisfy the “on-sale” condition, and pre- and post-installation testing clauses in an agreement may not be sufficient to qualify for the experimental use doctrine unless they evidence that the primary purpose of the sale was to conduct experimentation.
An invention is not “ready for patenting” until the invention has been tested in a variety of settings and is known to work for its intended purpose.
Failure to disclose a material action, which potentially triggers the on-sale bar, with specific intent to deceive the PTO may constitute inequitable conduct, which renders any resulting patent unenforceable.
The Federal Circuit held a patent invalid under the 35 U.S.C. § 102(b) on-sale bar test of Pfaff because (1) the invention was ready for patenting, based on a declaration by the inventor that the invention was “reduced to practice,” and (2) the invention was the subject of a commercial sale, based on the fact that testers were invoiced for calls made during beta testing, prior to the critical date.
Infringement plaintiff’s lease of computer program and telecommunications network to brokerage firm constituted “sale,” within meaning of 35 U.S.C. § 102(b), for purposes of assessing validity of plaintiff’s patent for interactive securities trading systems since plaintiff conveyed fully operational computer program implementing claimed method.