2133.03(c) The “Invention”
This MPEP section has limited applicability to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.
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A person shall be entitled to a patent unless -
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(b) the invention was…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
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I. THE INVENTION MUST BE “READY FOR PATENTING”
the Supreme Court enunciated a two-prong test for determining whether an invention was “on sale” within the meaning of pre-AIA 35 U.S.C. 102(b) even if it has not yet been reduced to practice.
“[T]he on-sale bar applies when two conditions are satisfied before the critical date [more than one year before the effective filing date of the U.S. application]. First, the product must be the subject of a commercial offer for sale…. Second, the invention must be ready for patenting.”
The Federal Circuit explained that the Supreme Court’s “ready for patenting” prong applies in the context of both the on sale and public use bars.
“A bar under [pre-AIA] section 102(b) arises where, before the critical date, the invention is in public use and ready for patenting.”
“Ready for patenting,” the second prong of the Pfaff test, may be satisfied in at least two ways:
- by proof of reduction to practice before the critical date; or
- by proof that prior to the critical date the inventor had prepared drawings or other descriptions of the invention that were sufficiently specific to enable a person skilled in the art to practice the invention.
If the invention was actually reduced to practice before being sold or offered for sale more than 1 year before filing of the application, a patent will be barred.
The patent was held invalid because the invention for a computer chip socket was “ready for patenting” when it was offered for sale more than one year prior to the application filing date. Even though the invention had not yet been reduced to practice, the manufacturer was able to produce the claimed computer chip sockets using the inventor’s detailed drawings and specifications, and those sockets contained all elements of invention claimed in the patent.
Claim for a particular anhydrous crystalline form of a pharmaceutical compound was held invalid under the on-sale bar of pre-AIA 35 U.S.C. 102(b), even though the parties to the U.S. sales of the foreign manufactured compound did not know the identity of the particular crystalline form.
Claim for a lacrosse stick was held invalid under the on-sale bar despite the argument that it was not known at the time of sale whether the sticks possessed the recited “improved playing and handling characteristics.” “Subjective qualities inherent in a product, such as ‘improved playing and handling’, cannot serve as an escape hatch to circumvent an on-sale bar.”
Actual reduction to practice in the context of an on-sale bar issue usually requires testing under actual working conditions in such a way as to demonstrate the practical utility of an invention for its intended purpose beyond the probability of failure, unless by virtue of the very simplicity of an invention its practical operativeness is clear.
The invention need not be ready for satisfactory commercial marketing for sale to bar a patent.
II. INVENTOR HAS SUBMITTED A 37 CFR 1.131 AFFIDAVIT OR DECLARATION
Affidavits or declarations submitted under 37 CFR 1.131 to swear behind a reference may constitute, among other things, an admission that an invention was “complete” more than 1 year before the filing of an application.
III. SALE OF A PROCESS
A claimed process, which is a series of acts or steps, is not sold in the same sense as is a claimed product, device, or apparatus, which is a tangible item.
“‘Know-how’ describing what the process consists of and how the process should be carried out may be sold in the sense that the buyer acquires knowledge of the process and obtains the freedom to carry it out pursuant to the terms of the transaction.
- However, such a transaction is not a ‘sale’ of the invention within the meaning of [pre-AIA] §102(b) because the process has not been carried out or performed as a result of the transaction.”
- However, sale of a product made by the claimed process by the patentee or a licensee would constitute a sale of the process within the meaning of pre-AIA 35 U.S.C. 102(b).
The application of pre-AIA 35 U.S.C. 102(b) would also be triggered by actually performing the claimed process itself for consideration.
The sale of a device embodying a claimed process may trigger the on-sale bar.
Patent was held invalid under pre-AIA 35 U.S.C. 102(b) based on patentee’s offer to perform the claimed process for treating oil refinery waste more than one year before filing the patent application.
Even though the sale of a product made by a claimed method before the critical date did not reveal anything about the method to the public, the sale resulted in a “forfeiture” of any right to a patent to that method.
Stating that the transaction involving the sale of the prior art device did not involve a transaction of the claimed method but instead only a device different from that described in the patent for carrying out the claimed method, where the device was not used to practice the claimed method until well after the critical date, and where there was evidence that it was not even known whether the device could perform the claimed process.
The sale of a prior art device different from that disclosed in a patent that is asserted after the critical date to be capable of performing the claimed method is not an on-sale bar of the process.
