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.
A secret (i.e., non-public) sale or sale that does not disclose the invention is still prior art under 35 U.S.C. § 102(a)(1). A nondisclosure agreement does not provide safe harbor against the on-sale bar.
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.
Federal Circuit finds that a ‘supply contract’ for manufacturing services between a manufacturer and an inventor, more than one year before filing a patent application, does not trigger the on-sale bar of 35 U.S.C. § 102(b) (pre-AIA) as it is not a “commercial sale” under the Uniform Commercial Code.
Activities prior to patenting that embody the claimed subject matter may trigger the on-sale bar under 35 U.S.C. § 102(b).
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.
The Supreme Court sets forth the current two-step analysis with respect to triggering of the on-sale bar under 35 U.S.C. § 102(b): 1) whether a commercial offer for sale was made, and 2) whether the invention was ready for patenting.
The Federal Circuit holds that rewriting a dependent claim into independent form, coupled with the cancelation of its original independent claim, gives rise to prosecution history estoppel.