MPEP 2133: Difference between revisions

2133 35 U.S.C. 102(b)[edit | edit source]

THE 1-YEAR GRACE PERIOD IS EXTENDED TO THE NEXT WORKING DAY IF IT WOULD OTHERWISE END ON A HOLIDAY OR WEEKEND[edit | edit source]

Publications, patents, public uses and sales must occur “more than one year prior to the date of application for patent in the United States” in order to bar a patent under 35 U.S.C. 102(b). However, applicant’s own activity will not bar a patent if the 1-year grace period expires on a Saturday, Sunday, or Federal holiday and the application’s U.S. filing date is the next succeeding business day.

THE 1-YEAR TIME BAR IS MEASURED FROM THE U.S. FILING DATE[edit | edit source]

If one discloses his or her own work more than one year before the filing of the patent application, that person is barred from obtaining a patent. The 1-year time bar is measured from the U.S. filing date. Thus, applicant will be barred from obtaining a patent if the public came into possession of the invention on a date before the 1-year grace period ending with the U.S. filing date. It does not matter how the public came into possession of the invention. Public possession could occur by a public use, public sale, a publication, a patent or any combination of these. In addition, the prior art need not be identical to the claimed invention but will bar patentability if it is an obvious variant thereof.

See MPEP § 706.02 regarding the effective U.S. filing date of an application.

2133.01 Rejections of Continuation-In-Part (CIP) Applications[edit | edit source]

When applicant files a continuation-in-part whose claims are not supported by the parent application, the effective filing date is the filing date of the child CIP. Any prior art disclosing the invention or an obvious variant thereof having a critical reference date more than 1 year prior to the filing date of the child will bar the issuance of a patent under 35 U.S.C. 102(b).

2133.02 Rejections Based on Publications and Patents[edit | edit source]

APPLICANT’S OWN WORK WHICH WAS AVAILABLE TO THE PUBLIC BEFORE THE GRACE PERIOD MAY BE USED IN A 35 U.S.C. 102(b) REJECTION[edit | edit source]

Any invention described in a printed publication more than one year prior to the date of a patent application is prior art under Section 102(b), even if the printed publication was authored by the patent applicant.

Once an inventor has decided to lift the veil of secrecy from his [or her] work, he [or she] must choose between the protection of a federal patent, or the dedication of his [or her] idea to the public at large.”

A 35 U.S.C. 102(b) REJECTION CREATES A STATUTORY BAR TO PATENTABILITY OF THE REJECTED CLAIMS[edit | edit source]

A rejection under 35 U.S.C. 102(b) cannot be overcome by affidavits and declarations under 37 CFR 1.131 (Rule 131 Declarations), foreign priority dates, or evidence that applicant himself invented the subject matter. Outside the 1-year grace period, applicant is barred from obtaining a patent containing any anticipated or obvious claims.

2133.03 Rejections Based on "Public Use" or “On Sale”[edit | edit source]

35 U.S.C. 102(b) contains several distinct bars to patentability, each of which relates to activity or disclosure more than one year prior to the date of the application. Two of these - the 'public use' and the 'on sale' objections - are sometimes considered together although either may apply when the other does not.

There may be a public use of an invention absent any sales activity. Likewise, there may be a nonpublic, e.g., “secret,” sale or offer to sell an invention which nevertheless constitutes a statutory bar.

In similar fashion, not all “public use” and “on sale” activities will necessarily occasion the identical result. Although both activities affect how an inventor may use an invention prior to the filing of a patent application, “non-commercial” 35 U.S.C. 102(b) activity may not be viewed the same as similar “commercial” activity. See MPEP § 2133.03(a) and § 2133.03(e)(1).

Likewise, “public use” activity by an applicant may not be considered in the same light as similar “public use” activity by one other than an applicant. See MPEP § 2133.03(a) and § 2133.03(e)(7). Additionally, the concept of “experimental use” may have different significance in “commercial” and “non-commercial” environments. See MPEP § 2133.03(c) and § 2133.03(e) - § 2133.03(e)(6).

It should be noted that 35 U.S.C. 102(b) may create a bar to patentability either alone, if the device in public use or placed on sale anticipates a later claimed invention, or in conjunction with 35 U.S.C. 103, if the claimed invention would have been obvious from the device in conjunction with the prior art. LaBounty Mfg. v. United States Int’l Trade Comm’n, 958 F.2d 1066, 1071, 22 USPQ2d 1025, 1028 (Fed. Cir. 1992).

POLICY CONSIDERATIONS

(A)“One policy underlying the [on-sale] bar is to obtain widespread disclosure of new inventions to the public via patents as soon as possible.” RCA Corp. v. Data Gen. Corp., 887 F.2d 1056, 1062, 12 USPQ2d 1449, 1454 (Fed. Cir. 1989).

(B)Another policy underlying the public use and on-sale bars is to prevent the inventor from commercially exploiting the exclusivity of his [or her] invention substantially beyond the statutorily authorized period. RCA Corp. v. Data Gen. Corp., 887 F.2d 1056, 1062, 12 USPQ2d 1449, 1454 (Fed. Cir. 1989). See MPEP § 2133.03(e)(1).

(C)Another underlying policy for the public use and on-sale bars is to discourage “the removal of inventions from the public domain which the public justifiably comes to believe are freely available.” Manville Sales Corp. v. Paramount Sys., Inc., 917 F.2d 544, 549, 16 USPQ2d 1587, 1591 (Fed. Cir. 1990).

2133.03(a) “Public Use”[edit | edit source]

I. TEST FOR “PUBLIC USE[edit | edit source]

The public use bar under 35 U.S.C. 102(b) arises where the invention is in public use before the critical date and is ready for patenting. Invitrogen Corp. v. Biocrest Manufacturing L.P., 424 F.3d 1374, 76 USPQ2d 1741 (Fed. Cir. 2005). As explained by the court,

The proper test for the public use prong of the § 102 (b) statutory bar is whether the purported use: (1) was accessible to the public; or (2) was commercially exploited. Commercial exploitation is a clear indication of public use, but it likely requires more than, for example, a secret offer for sale. Thus, the test for the public use prong includes the consideration of evidence relevant to experimentation, as well as, inter alia, the nature of the activity that occurred in public; public access to the use; confidentiality obligations imposed on members of the public who observed the use; and commercial exploitation…. That evidence is relevant to discern whether the use was a public use that could raise a bar to patentability, but it is distinct from evidence relevant to the ready for patenting component of Pfaff ’s two-part test, another necessary requirement of a public use bar

Id. at 1380, 76 USPQ2d at 1744 (citations omitted). See MPEP § 2133.03(c) for a discussion of the “ready for patenting” prong of the public use and on sale statutory bars.

“[T]o constitute the public use of an invention it is not necessary that more than one of the patent articles should be publicly used. The use of a great number may tend to strengthen the proof, but one well defined case of such use is just as effectual to annul the patent as many.” Likewise, it is not necessary that more than one person use the invention. Egbert v. Lippmann, 104 U.S. 333, 336 (1881).

II. PUBLIC KNOWLEDGE IS NOT NECESSARILY PUBLIC USE UNDER 35 U.S.C. 102(b)[edit | edit source]

Mere knowledge of the invention by the public does not warrant rejection under 35 U.S.C. 102(b). 35 U.S.C. 102(b) bars public use or sale, not public knowledge. TP Labs., Inc., v. Professional Positioners, Inc., 724 F.2d 965, 970, 220 USPQ 577, 581 (Fed. Cir. 1984).

Note, however, that public knowledge may provide grounds for rejection under 35 U.S.C. 102(a). See MPEP § 2132.

A. Commercial Versus Noncommercial Use and the Impact of Secrecy

There are limited circumstances in which a secret or confidential use of an invention may give rise to the public use bar. “[S]ecrecy of use alone is not sufficient to show that existing knowledge has not been withdrawn from public use; commercial exploitation is also forbidden.” Invitrogen, 424 F.3d at 1382, 76 USPQ2d at 1745-46 (The fact that patentee secretly used the claimed invention internally before the critical date to develop future products that were never sold was by itself insufficient to create a public use bar to patentability.).

1. “Public Use” and “Non-secret Use” Are Not Necessarily Synonymous

“Public” is not necessarily synonymous with “non- secret.” The fact “that non-secret uses of the device were made [by the inventor or someone connected with the inventor] prior to the critical date is not itself dispositive of the issue of whether activity barring a patent under 35 U.S.C. 102(b) occurred. The fact that the device was not hidden from view may make the use not secret, but nonsecret use is not ipso facto ‘public use’ activity. Nor, it must be added, is all secret use ipso facto not ‘public use’ within the meaning of the statute,” if the inventor is making commercial use of the invention under circumstances which preserve its secrecy. TP Labs., Inc. v. Professional Positioners, Inc., 724 F.2d 965, 972, 220 USPQ 577, 583 (Fed. Cir. 1983) (citations omitted).

2. Even If the Invention Is Hidden, Inventor Who Puts Machine or Article Embodying the Invention in Public View Is Barred from Obtaining a Patent as the Invention Is in Public Use

When the inventor or someone connected to the inventor puts the invention on display or sells it, there is a “public use” within the meaning of 35 U.S.C. 102(b) even though by its very nature an invention is completely hidden from view as part of a larger machine or article, if the invention is otherwise used in its natural and intended way and the larger machine or article is accessible to the public. In re Blaisdell, 242 F.2d 779, 783, 113 USPQ 289, 292 (CCPA 1957); Hall v. Macneale, 107 U.S. 90, 96-97 (1882); Ex parteKuklo, 25 USPQ2d 1387, 1390 (Bd. Pat. App. & Inter. 1992) (Display of equipment including the structural features of the claimed invention to visitors of laboratory is public use even though public did not see inner workings of device. The person to whom the invention is publicly disclosed need not understand the significance and technical complexities of the invention.).

3.There Is No Public Use If Inventor Restricted Use to Locations Where There Was a Reasonable Expectation of Privacy and the Use Was for His or Her Own Enjoyment

An inventor’s private use of the invention, for his or her own enjoyment is not a public use. Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1265, 229 USPQ 805, 809 (Fed. Cir. 1986) (Inventor showed inventive puzzle to close friends while in his dorm room and later the president of the company at which he was working saw the puzzle on the inventor’s desk and they discussed it. Court held that the inventor retained control and thus these actions did not result in a “public use.”).

4. The Presence or Absence of a Confidentiality Agreement is Not Dispositive of the Public Use Issue

“The presence or absence of a confidentiality agreement is not dispositive of the public use issue, but ‘is one factor to be considered in assessing all the evidence.’” Bernhardt, L.L.C. v. Collezione Europa USA, Inc., 386 F.3d 1371, 1380-81, 72 USPQ2d, 1901, 1909 (Fed. Cir. 2004) (quoting Moleculon Research Corp. v. CBS Inc., 793 F.2d 1261, 1266, 229 USPQ 805, 808 (Fed. Cir. 1986)). The court stressed that it is necessary to analyze the evidence of public use in the context of policies that underlie the public use and on sale bar that include “‘discouraging removal of inventions from the public domain that the public justifiably believes are freely available, prohibiting an extension of the period for exploiting an invention, and favoring prompt and widespread disclosure of inventions.’” Bernhardt, 386 F.3d at 1381, 72 USPQ2d at 1909. See also Invitrogen, 424 F.3d at 1379, 76 USPQ2d at 1744; MPEP § 2133.03, Policy Considerations. Evidence that the court emphasized included the “‘nature of the activity that occurred in public; the public access to and knowledge of the public use; [and] whether there were any confidentiality obligations imposed on persons who observed the use.’” Bernhardt, 386 F.3d at 1381, 72 USPQ2d at 1909. For example, the court in Bernhardt noted that an exhibition display at issue in the case “was not open to the public, that the identification of attendees was checked against a list of authorized names by building security and later at a reception desk near the showroom, that attendees were escorted through the showroom, and that the attendees were not permitted to make written notes or take photographs inside the showroom.” Id. The court remanded the issue of whether the exhibition display was a public use for further proceedings since the district court “focused on the absence of any confidentiality agreements and did not discuss or analyze how the totality of the circumstances surrounding” the exhibition “comports with the policies underlying the public use bar.” Id.

B. Use by Third Parties Deriving the Invention from Applicant

An Invention Is in Public Use If the Inventor Allows Another To Use the Invention Without Restriction or Obligation of Secrecy

“Public use” of a claimed invention under 35 U.S.C. 102(b) occurs when the inventor allows another person to use the invention without limitation, restriction or obligation of secrecy to the inventor.” In re Smith, 714 F.2d 1127, 1134, 218 USPQ 976, 983 (Fed. Cir. 1983). The presence or absence of a confidentiality agreement is not itself determinative of the public use issue, but is one factor to be considered along with the time, place, and circumstances of the use which show the amount of control the inventor retained over the invention. Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1265, 229 USPQ 805, 809 (Fed. Cir. 1986). See Ex parte C, 27 USPQ2d 1492, 1499 (Bd. Pat. App. & Inter. 1992) (Inventor sold inventive soybean seeds to growers who contracted and were paid to plant the seeds to increase stock for later sale. The commercial nature of the use of the seed coupled with the “on-sale” aspects of the contract and apparent lack of confidentiality requirements rose to the level of a “public use” bar.); Egbert v. Lippmann, 104 U.S. 333, 336 (1881) (Public use found where inventor allowed another to use inventive corset insert, though hidden from view during use, because he did not impose an obligation of secrecy or restrictions on its use.).

C.Use by Independent Third Parties

Use by an Independent Third Party Is Public Use If It Sufficiently “Informs” the Public of the Invention or a Competitor Could Reasonably Ascertain the Invention

Any “nonsecret” use of an invention by someone unconnected to the inventor, such as someone who has independently made the invention, in the ordinary course of a business for trade or profit may be a “public use,” Bird Provision Co. v. Owens Country Sausage, Inc., 568 F.2d 369, 374-76, 197 USPQ 134, 138-40 (5th Cir. 1978). Additionally, even a “secret” use by another inventor of a machine or process to make a product is “public” if the details of the machine or process are ascertainable by inspection or analysis of the product that is sold or publicly displayed. Gillman v. Stern, 114 F.2d 28, 46 USPQ 430 (2d Cir. 1940); Dunlop Holdings, Ltd. v. Ram Golf Corp., 524 F.2d 33, 36-7, 188 USPQ 481, 483-484 (7th Cir. 1975). If the details of an inventive process are not ascertainable from the product sold or displayed and the third party has kept the invention as a trade secret then that use is not a public use and will not bar a patent issuing to someone unconnected to the user. W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540, 1550, 220 USPQ 303, 310 (Fed. Cir. 1983). However, a device qualifies as prior art if it places the claimed features in the public's possession before the critical date even if other unclaimedaspects of the device were not publicly available. Lockwood v. American Airlines, Inc., 41 USPQ2d 1961, 1964-65 (Fed. Cir. 1997) (Computer reservation system was prior art even though “essential algorithms of the SABRE software were proprietary and confidential and...those aspects of the system that were readily apparent to the public would not have been sufficient to enable one skilled in the art to duplicate the [unclaimed aspects of the] system.”). The extent that the public becomes “informed” of an invention involved in public use activity by one other than an applicant depends upon the factual circumstances surrounding the activity and how these comport with the policies underlying the on sale and public use bars. Manville Sales Corp. v. Paramount Sys., Inc., 917 F.2d 544, 549, 16 USPQ2d 1587, 1591 (Fed. Cir. 1990) (quoting King Instrument Corp. v. Otari Corp., 767 F.2d 833, 860, 226 USPQ 402, 406 (Fed. Cir. 1985)). By way of example, in an allegedly “secret” use by a third party other than an applicant, if a large number of employees of such a party, who are not under a promise of secrecy, are permitted unimpeded access to an invention, with affirmative steps by the party to educate other employees as to the nature of the invention, the public is “informed.” Chemithon Corp. v. Proctor & Gamble Co., 287 F. Supp. 291, 308, 159 USPQ 139, 154 (D.Md. 1968), aff’d., 427 F.2d 893, 165 USPQ 678 (4th Cir. 1970).

Even if public use activity by one other than an applicant is not sufficiently “informing,” there may be adequate grounds upon which to base a rejection under 35 U.S.C. 102(f) and 35 U.S.C. 102(g). See Dunlop Holdings Ltd. v. Ram Golf Corp., 524 F.2d 33, 188 USPQ 481 (7th Cir. 1975). See MPEP § 2137 and § 2138.

2133.03(b) “On Sale”[edit | edit source]

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 (1) the subject of a commercial offer for sale not primarily for experimental purposes and (2) ready for patenting. Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67, 48 USPQ2d 1641, 1646-47 (1998). 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 USPQ2d 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.”).

I. THE MEANING OF “SALE”[edit | edit source]

A sale is a contract between parties wherein the seller agrees “to give and to pass rights of property” in return for the buyer’s payment or promise “to pay the seller for the things bought or sold.” In re Caveney, 761 F.2d 671, 676, 226 USPQ 1, 4 (Fed. Cir. 1985). A contract for the sale of goods requires a concrete offer and acceptance of that offer. See, e.g., Linear Tech., 275 F.3d at 1052-54, 61 USPQ2d at 1233-34 (Court held there was no sale within the meaning of 35 U.S.C. 102(b) where prospective purchaser submitted an order for goods at issue, but received an order acknowledgement reading “will advise-not booked.” Prospective purchaser would understand that order was not accepted.).

A. Conditional Sale May Bar a Patent

An invention may be deemed to be “on sale” even though the sale was conditional. The fact that the sale is conditioned on buyer satisfaction does not, without more, prove that the sale was for an experimental purpose. Strong v. General Elec. Co., 434 F.2d 1042, 1046, 168 USPQ 8, 12 (5th Cir. 1970).

B. Nonprofit Sale May Bar a Patent

A “sale” need not be for profit to bar a patent. If the sale was for the commercial exploitation of the invention, it is “on sale” within the meaning of 35 U.S.C. 102(b). In re Dybel, 524 F.2d 1393, 1401, 187 USPQ 593, 599 (CCPA 1975) (“Although selling the devices for a profit would have demonstrated the purpose of commercial exploitation, the fact that appellant realized no profit from the sales does not demonstrate the contrary.”).

C. A Single Sale or Offer To Sell May Bar a Patent

Even a single sale or offer to sell the invention may bar patentability under 35 U.S.C. 102(b). Consolidated Fruit-Jar Co. v. Wright, 94 U.S. 92, 94 (1876); Atlantic Thermoplastics Co. v. Faytex Corp., 970 F.2d 834, 836-37, 23 USPQ2d 1481, 1483 (Fed. Cir. 1992).

D.A Sale of Rights Is Not a Sale of the Invention and Will Not in Itself Bar a Patent

“[A]n assignment or sale of the rights in the invention and potential patent rights is not a sale of ‘the invention’ within the meaning of section 102(b).” Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1267, 229 USPQ 805, 809 (Fed. Cir. 1986); see also Elan Corp., PLC v. Andrx Pharms. Inc., 366 F.3d 1336, 1341, 70 USPQ2d 1722, 1728 (Fed. Cir. 2004); In re Kollar, 286 F.3d 1326, 1330 n.3, 1330-1331, 62 USPQ2d 1425, 1428 n.3, 1428-1429 (Fed. Cir. 2002) (distinguishing licenses which trigger the on-sale bar (e.g., a standard computer software license wherein the product is just as immediately transferred to the licensee as if it were sold), from licenses that merely grant rights to an invention which do not per se trigger the on-sale bar (e.g., exclusive rights to market the invention or potential patent rights)); Group One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041, 1049 n. 2, 59 USPQ2d 1121, 1129 n. 2 (Fed. Cir. 2001).

E. Buyer Must Be Uncontrolled by the Seller or Offerer

A sale or offer for sale must take place between separate entities. In re Caveney, 761 F.2d 671, 676, 226 USPQ 1, 4 (Fed. Cir. 1985). “Where the parties to the alleged sale are related, whether there is a statutory bar depends on whether the seller so controls the purchaser that the invention remains out of the public’s hands. Ferag AG v. Quipp, Inc., 45 F.3d 1562, 1566, 33 USPQ2d 1512, 1515 (Fed. Cir. 1995) (Where the seller is a parent company of the buyer company, but the President of the buyer company had “essentially unfettered” management authority over the operations of the buyer company, the sale was a statutory bar.).

II. OFFERS FOR SALE[edit | edit source]

“Only an offer which rises to the level of a commercial offer for sale, one which the other party could make into a binding contract by simple acceptance (assuming consideration), constitutes an offer for sale under §102(b).” Group One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041,1048, 59 USPQ2d 1121, 1126 (Fed. Cir. 2001).

A. Rejected or Unreceived Offer for Sale Is Enough To Bar a Patent

Since the statute creates a bar when an invention is placed “on sale,” a mere offer to sell is sufficient commercial activity to bar a patent. In re Theis, 610 F.2d 786, 791, 204 USPQ 188, 192 (CCPA 1979). Even a rejected offer may create an on sale bar. UMC Elecs. v. United States, 816 F.2d 647, 653, 2 USPQ2d 1465, 1469 (Fed. Cir. 1987). In fact, the offer need not even be actually received by a prospective purchaser. Wende v. Horine, 225 F. 501 (7th Cir. 1915).

B. Delivery of the Offered Item Is Not Required

“It is not necessary that a sale be consummated for the bar to operate.” Buildex v. Kason Indus., Inc., 849 F.2d 1461, 1463-64, 7 USPQ2d 1325, 1327-28 (Fed. Cir. 1988) (citations omitted). See also Weatherchem Corp. v. J.L. Clark Inc., 163 F.3d 1326, 1333, 49 USPQ2d 1001, 1006-07 (Fed. Cir. 1998) (A signed purchase agreement prior to the critical date constituted a commercial offer; it was immaterial that there was no delivery of later patented caps and no exchange of money until after critical date.).

C. Seller Need Not Have the Goods “On Hand” when the Offer for Sale Is Made

Goods need not be “on hand” and transferred at the time of the sale or offer. The date of the offer for sale is the effective date of the “on sale” activity. J. A. La Porte, Inc. v. Norfolk Dredging Co., 787 F.2d 1577, 1582, 229 USPQ 435, 438 (Fed. Cir. 1986). However, the invention must be complete and “ready for patenting” (see MPEP § 2133.03(c)) before the critical date. Pfaff v. Wells Elecs., Inc. , 525 U.S. 55, 67, 119 S.Ct. 304, 311-12, 48 USPQ2d 1641, 1647 (1998). See also Micro Chemical, Inc. v. Great Plains Chemical Co., 103 F.3d 1538, 1545, 41 USPQ2d 1238, 1243 (Fed. Cir. 1997) (The on-sale bar was not triggered by an offer to sell because the inventor “was not close to completion of the invention at the time of the alleged offer and had not demonstrated a high likelihood that the invention would work for its intended purpose upon completion.”); Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 225 USPQ 634 (Fed. Cir. 1985) (Where there was no evidence that the samples shown to the potential customers were made by the new process and apparatus, the offer to sell did not rise to the level of an on sale bar.). Compare Barmag Barmer Maschinenfabrik AG v. Murata Mach., Ltd., 731 F.2d 831, 221 USPQ 561 (Fed. Cir. 1984) (Where a “make shift” model of the inventive product was shown to the potential purchasers in conjunction with the offer to sell, the offer was enough to bar a patent under 35 U.S.C. 102(b).).

D. Material Terms of an Offer for Sale Must be Present

“[A] communication that fails to constitute a definite offer to sell the product and to include material terms is not an ‘offer’ in the contract sense.” Elan Corp., PLC v. Andrx Pharms. Inc., 366 F.3d 1336, 1341, 70 USPQ2d 1722, 1728 (Fed. Cir. 2004). The court stated that an “offer to enter into a license under a patent for future sale of the invention covered by the patent when and if it has been developed... is not an offer to sell the patented invention that constitutes an on-sale bar.” Id., 70 USPQ2d at 1726. Accordingly, the court concluded that Elan’s letter was not an offer to sell a product. In addition, the court stated that the letter lacked material terms of a commercial offer such as pricing for the product, quantities, time and place of delivery, and product specifications and that the dollar amount in the letter was not a price term for the sale of the product but rather the amount requested was to form and continue a partnership, explicitly referred to as a “licensing fee.” Id.

III.SALE BY INVENTOR, ASSIGNEE OR OTHERS ASSOCIATED WITH THE INVENTOR IN THE COURSE OF BUSINESS[edit | edit source]

A. Sale Activity Need Not Be Public

Unlike questions of public use, there is no requirement that “on sale” activity be “public.” “Public” as used in 35 U.S.C. 102(b) modifies “use” only. “Public” does not modify “sale.” Hobbs v. United States, 451 F.2d 849, 171 USPQ 713, 720 (5th Cir. 1971).

B. Inventor’s Consent to the Sale Is Not a Prerequisite To Finding an On Sale Bar

If the invention was placed on sale by a third party who obtained the invention from the inventor, a patent is barred even if the inventor did not consent to the sale or have knowledge that the invention was embodied in the sold article. Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5, 41 USPQ 155 (1938); In re Blaisdell, 242 F.2d 779, 783, 113 USPQ 289, 292 (CCPA 1957); CTS Corp. v. Electro Materials Corp. of America, 469 F. Supp. 801, 819, 202 USPQ 22, 38 (S.D.N.Y. 1979).

C. Objective Evidence of Sale or Offer To Sell Is Needed

In determining if a sale or offer to sell the claimed invention has occurred, a key question to ask is whether the inventor sold or offered for sale a product that embodies the invention claimed in the application. Objective evidence such as a description of the inventive product in the contract of sale or in another communication with the purchaser controls over an uncommunicated intent by the seller to deliver the inventive product under the contract for sale. Ferag AG v. Quipp, Inc., 45 F.3d 1562, 1567, 33 USPQ2d 1512, 1516 (Fed. Cir. 1995) (On sale bar found where initial negotiations and agreement containing contract for sale neither clearly specified nor precluded use of the inventive design, but an order confirmation prior to the critical date did specify use of inventive design.). The purchaser need not have actual knowledge of the invention for it to be on sale. The determination of whether “the offered product is in fact the claimed invention may be established by any relevant evidence, such as memoranda, drawings, correspondence, and testimony of witnesses.” RCA Corp. v. Data Gen. Corp., 887 F.2d 1056, 1060, 12 USPQ2d 1449, 1452 (Fed. Cir. 1989). However, “what the purchaser reasonably believes the inventor to be offering is relevant to whether, on balance, the offer objectively may be said to be of the patented invention.” Envirotech Corp. v. Westech Eng’g, Inc., 904 F.2d 1571, 1576, 15 USPQ2d 1230, 1234 (Fed. Cir. 1990) (Where a proposal to supply a general contractor with a product did not mention a new design but, rather, referenced a prior art design, the uncommunicated intent of the supplier to supply the new design if awarded the contract did not constitute an “on sale” bar to a patent on the new design, even though the supplier’s bid reflected the lower cost of the new design.).

IV. SALES BY INDEPENDENT THIRD PARTIES[edit | edit source]

A. Sales or Offers for Sale by Independent Third Parties Will Bar a Patent

Sale or offer for sale of the invention by an independent third party more than 1 year before the filing date of applicant’s patent will bar applicant from obtaining a patent. “An exception to this rule exists where a patented method is kept secret and remains secret after a sale of the unpatented product of the method. Such a sale prior to the critical date is a bar if engaged in by the patentee or patent applicant, but not if engaged in by another.” In re Caveney, 761 F.2d 671, 675-76, 226 USPQ 1, 3-4 (Fed. Cir. 1985).

B. Nonprior Art Publications Can Be Used as Evidence of Sale Before the Critical Date

Abstracts identifying a product’s vendor containing information useful to potential buyers such as whom to contact, price terms, documentation, warranties, training and maintenance along with the date of product release or installation before the inventor’s critical date may provide sufficient evidence of prior sale by a third party to support a rejection based on 35 U.S.C. 102(b) or 103. In re Epstein, 32 F.3d 1559, 31 USPQ2d 1817 (Fed. Cir. 1994) (Examiner's rejection was based on nonprior art published abstracts which disclosed software products meeting the claims. The abstracts specified software release dates and dates of first installation which were more than 1 year before applicant’s filing date.).

2133.03(c) The “Invention”[edit | edit source]

(Emphasis added).

I. The Invention Must Be “Ready for Patenting”[edit | edit source]

The Supreme Court's two-prong test for determining whether an invention was "on sale" within the meaning of 35 U.S.C. 102(b) even if it has not yet been reduced to practice:

• The 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]:
  1. the product must be the subject of a commercial offer for sale; and
  2. the invention must be ready for patenting.”

Relevant case:

• Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 66-68, 119 S.Ct. 304, 311-12, 48 USPQ2d 1641, 1647 (1998)

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. Invitrogen Corp. v. Biocrest Manuf., 424 F.3d 1374, 1379, 76 USPQ2d 1741, 1744 (Fed. Cir. 2005)

“Ready for patenting” may be satisfied in at least two ways:

1. by proof of reduction to practice before the critical date; or
2. 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.

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[edit | edit source]

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. See MPEP § 715.10.

III. SALE OF A PROCESS[edit | edit source]

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 §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 35 U.S.C. 102(b). Even though such a sale of a product made by a claimed method before the critical date may not reveal anything about the method to the public, the sale could result in a "forfeiture" of any right to a patent to that method)

Relevant cases:

• In re Kollar, 286 F.3d 1326, 1332, 62 USPQ2d 1425, 1429 (Fed. Cir. 2002)
• D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144, 1147-48, 219 USPQ 13, 15-16 (Fed. Cir. 1983)

The application of 35 U.S.C. 102(b) would also be triggered by actually performing the claimed process itself for consideration. Moreover, the sale of a device embodying a claimed process may trigger the on-sale bar. However, 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.

2133.03(d) "In This Country"[edit | edit source]

For purposes of judging the applicability of the 35 U.S.C. 102(b) bars, public use or on sale activity must take place in the United States. The “on sale” bar does not generally apply where both manufacture and delivery occur in a foreign country. However, “on sale” status can be found if substantial activity prefatory to a “sale” occurs in the United States.

An offer for sale, made or originating in this country, may be sufficient prefatory activity to bring the offer within the terms of the statute, even though sale and delivery take place in a foreign country. The same rationale applies to an offer by a foreign manufacturer which is communicated to a prospective purchaser in the United States prior to the critical date.

2133.03(e) Permitted Activity; Experimental Use[edit | edit source]

The question posed by the experimental use doctrine is “whether the primary purpose of the inventor at the time of the sale, as determined from an objective evaluation of the facts surrounding the transaction, was to conduct experimentation.” Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1354, 63 USPQ2d 1769, 1780 (Fed. Cir. 2002), quoting EZ Dock v. Schafer Sys., Inc., 276 F.3d 1347, 1356-57, 61 USPQ2d 1289, 1295-96 (Fed. Cir. 2002) (Linn, J., concurring). Experimentation must be the primary purpose and any commercial exploitation must be incidental.

If the use or sale was experimental, there is no bar under 35 U.S.C. 102(b). “A use or sale is experimental for purposes of section 102(b) if it represents a bona fide effort to perfect the invention or to ascertain whether it will answer its intended purpose.…If any commercial exploitation does occur, it must be merely incidental to the primary purpose of the experimentation to perfect the invention.” LaBounty Mfg. v. United States Int’l Trade Comm’n, 958 F.2d 1066, 1071, 22 USPQ2d 1025, 1028 (Fed. Cir. 1992) (quoting Pennwalt Corp. v. Akzona Inc., 740 F.2d 1573, 1581, 222 USPQ 833, 838 (Fed. Cir. 1984)). “The experimental use exception…does not include market testing where the inventor is attempting to gauge consumer demand for his claimed invention. The purpose of such activities is commercial exploitation and not experimentation.” In re Smith, 714 F.2d 1127, 1134, 218 USPQ 976, 983 (Fed. Cir. 1983).

2133.03(e)(1) Commercial Exploitation[edit | edit source]

One policy of the on sale and public use bars is the prevention of inventors from exploiting their inventions commercially more than 1 year prior to the filing of a patent application. Therefore, if applicant’s precritical date activity isa sale or offer for sale that is an attempt at market penetration, a patent is barred. Thus, even if there is bona fide experimental activity, an inventor may not commercially exploit an invention more than 1 year prior to the filing date of an application. In re Theis, 610 F.2d 786, 793, 204 USPQ 188, 194 (CCPA 1979).

THE COMMERCIAL ACTIVITY MUST LEGITIMATELY ADVANCE DEVELOPMENT OF THE INVENTION TOWARDS COMPLETION

As the degree of commercial exploitation surrounding 35 U.S.C. 102(b) activity increases, the burden on an applicant to establish clear and convincing evidence of experimental activity with respect to a public use becomes more difficult. Where the examiner has found a prima facie case of a sale or an offer to sell, this burden will rarely be met unless clear and convincing necessity for the experimentation is established by the applicant. This does not mean, of course, that there are no circumstances which would permit alleged experimental activity in an atmosphere of commercial exploitation. In certain circumstances, even a sale may be necessary to legitimately advance the experimental development of an invention if the primary purpose of the sale is experimental. In re Theis, 610 F.2d 786, 793, 204 USPQ 188, 194 (CCPA 1979); Robbins Co. v. Lawrence Mfg. Co., 482 F.2d 426, 433, 178 USPQ 577, 582 (9th Cir. 1973). However, careful scrutiny by the examiner of the objective factual circumstances surrounding such a sale is essential. See Ushakoff v. United States, 327 F.2d 669, 140 USPQ 341 (Ct.Cl. 1964); Cloud v. Standard Packaging Corp., 376 F.2d 384, 153 USPQ 317 (7th Cir. 1967).

SIGNIFICANT FACTORS INDICATIVE OF “COMMERCIAL EXPLOITATION”

As discussed in MPEP § 2133.03, a policy consideration in questions of 35 U.S.C. 102(b) activity is premature “commercial exploitation” of a “completed” or “ready for patenting” invention (see MPEP § 2133.03(c)). The extent of commercial activity which constitutes 35 U.S.C. 102(b) “on sale” status depends upon the circumstances of the activity, the basic indicator being the subjective intent of the inventor as manifested through objective evidence. The following activities should be used by the examiner as indicia of this subjective intent:

(A) Preparation of various contemporaneous “commercial” documents, e.g., orders, invoices, receipts, delivery schedules, etc.;

(B) Preparation of price lists;

(C) Display of samples to prospective customers;

(D) Demonstration of models or prototypes;

(E) Use of an invention where an admission fee is charged ; and

(F) Advertising in publicity releases, brochures, and various periodicals.

See MPEP § 2133.03(e)(4) for factors indicative of an experimental purpose.

2133.03(e)(2) Intent[edit | edit source]

“When sales are made in an ordinary commercial environment and the goods are placed outside the inventor’s control, an inventor’s secretly held subjective intent to ‘experiment,’ even if true, is unavailing without objective evidence to support the contention. Under such circumstances, the customer at a minimum must be made aware of the experimentation.” LaBounty Mfg., Inc. v. United States Int’l Trade Comm’n, 958 F.2d 1066, 1072, 22 USPQ2d 1025, 1029 (Fed. Cir. 1992) (quoting Harrington Mfg. Co. v. Powell Mfg. Co., 815 F.2d 1478, 1480 n.3, 2 USPQ2d 1364, 1366 n.3 (Fed. Cir. 1986); Paragon Podiatry Laboratory, Inc. v. KLM Labs., Inc., 984 F.2d 1182, 25 USPQ2d 1561 (Fed. Cir. 1993) (Paragon sold the inventive units to the trade as completed devices without any disclosure to either doctors or patients of their involvement in alleged testing. Evidence of the inventor’s secretly held belief that the units were not durable and may not be satisfactory for consumers was not sufficient, alone, to avoid a statutory bar.).

2133.03(e)(3) "Completeness" of the Invention[edit | edit source]

I. EXPERIMENTAL USE ENDS WHEN THE INVENTION IS ACTUALLY REDUCED TO PRACTICE[edit | edit source]

Experimental use “means perfecting or completing an invention to the point of determining that it will work for its intended purpose.” Therefore, experimental use “ends with an actual reduction to practice.” RCA Corp. v. Data Gen. Corp., 887 F.2d 1056, 1061, 12 USPQ2d 1449, 1453 (Fed. Cir. 1989). If the examiner concludes from the evidence of record that an applicant was satisfied that an invention was in fact “complete,” awaiting approval by the applicant from an organization such as Underwriters’ Laboratories will not normally overcome this conclusion. InterRoyal Corp. v. Simmons Co., 204 USPQ 562, 566 (S.D.N.Y. 1979); Skil Corp. v. Rockwell Manufacturing Co., 358 F. Supp. 1257, 1261, 178 USPQ 562, 565 (N.D.Ill. 1973), aff’d. in part, rev’d in part sub nom. Skil Corp. v. Lucerne Products Inc., 503 F.2d 745, 183 USPQ 396, 399 (7th Cir. 1974), cert. denied, 420 U.S. 974, 185 USPQ 65 (1975). See MPEP § 2133.03(c) for more information of what constitutes a “complete” invention.

The fact that alleged experimental activity does not lead to specific modifications or refinements of an invention is evidence, although not conclusive evidence, that such activity is not within the realm permitted by the statute. This is especially the case where the evidence of record clearly demonstrates to the examiner that an invention was considered “complete” by an inventor at the time of the activity. Nevertheless, any modifications or refinements which did result from such experimental activity must at least be a feature of the claimed invention to be of any probative value. In re Theis, 610 F.2d 786, 793, 204 USPQ 188, 194 (CCPA 1979).

II. DISPOSAL OF PROTOTYPES[edit | edit source]

Where a prototype of an invention has been disposed of by an inventor before the critical date, inquiry by the examiner should focus upon the intent of the inventor and the reasonableness of the disposal under all circumstances. The fact that an otherwise reasonable disposal of a prototype involves incidental income is not necessarily fatal. In re Dybel, 524 F.2d 1393, 1399, n.5, 187 USPQ 593, 597 n.5 (CCPA 1975). However, if a prototype is considered “complete” by an inventor and all experimentation on the underlying invention has ceased, unrestricted disposal of the prototype constitutes a bar under 35 U.S.C. 102(b). In re Blaisdell, 242 F.2d 779, 113 USPQ 289 (CCPA 1957); contra, Watson v. Allen, 254 F.2d 342, 117 USPQ 68 (D.C. Cir. 1958).

2133.03(e)(4) Factors Indicative of an Experimental Purpose[edit | edit source]

The courts have considered a number of factors in determining whether a claimed invention was the subject of a commercial offer for sale primarily for purposes of experimentation. “These factors include: (1) the necessity for public testing, (2) the amount of control over the experiment retained by the inventor, (3) the nature of the invention, (4) the length of the test period, (5) whether payment was made, (6) whether there was a secrecy obligation, (7) whether records of the experiment were kept, (8) who conducted the experiment, ... (9) the degree of commercial exploitation during testing[,] ... (10) whether the invention reasonably requires evaluation under actual conditions of use, (11) whether testing was systematically performed, (12) whether the inventor continually monitored the invention during testing, and (13) the nature of contacts made with potential customers.” Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1353, 63 USPQ2d 1769, 1780 (Fed. Cir. 2002) quoting EZ Dock v. Schafer Sys., Inc., 276 F.3d 1347, 1357, 61 USPQ2d 1289, 1296 (Fed. Cir. 2002) (Linn, J., concurring). Another critical attribute of experimentation is the “customer’s awareness of the purported testing in the context of a sale.” Electromotive Div. of Gen. Motors Corp. v. Transportation Sys. Div. of Gen. Elec. Co., 417 F.3d 1203, 1241, 75 USPQ2d 1650, 1658 (Fed. Cir. 2005).

Once alleged experimental activity is advanced by an applicant to explain a prima facie case under 35 U.S.C. 102(b), the examiner must determine whether the scope and length of the activity were reasonable in terms of the experimental purpose intended by the applicant and the nature of the subject matter involved. No one of, or particular combination of, factors is necessarily determinative of this purpose.

See MPEP § 2133.03(e)(1) for factors indicative of commercial exploitation.

2133.03(e)(5) Experimentation and Degree of Supervision and Control[edit | edit source]

THE INVENTOR MUST MAINTAIN SUFFICIENT CONTROL OVER THE INVENTION DURING TESTING BY THIRD PARTIES

The significant determinative factors in questions of experimental purpose are the extent of supervision and control maintained by an inventor over an invention during an alleged period of experimentation , and the customer’s awareness of the experimentation. Electromotive Div. of Gen. Motors Corp. v. Transportation Sys. Div. of Gen. Elec. Co., 417 F.3d 1203, 1214,75 USPQ2d 1650, 1658 (Fed. Cir. 2005)(“control and customer awareness ordinarily must be proven if experimentation is to be found”). Once a period of experimental activity has ended and supervision and control has been relinquished by an inventor without any restraints on subsequent use of an invention, an unrestricted subsequent use of the invention is a 35 U.S.C. 102(b) bar. In re Blaisdell, 242 F.2d 779, 784, 113 USPQ 289, 293 (CCPA 1957).

2133.03(e)(6) Permitted Experimental Activity and Testing[edit | edit source]

I. DEVELOPMENTAL TESTING IS PERMITTED[edit | edit source]

Testing of an invention in the normal context of its technological development is generally within the realm of permitted experimental activity. Likewise, experimentation to determine utility, as that term is applied in 35 U.S.C. 101, may also constitute permissible activity. See General Motors Corp. v. Bendix Aviation Corp., 123 F. Supp. 506, 521, 102 USPQ 58, 69 (N.D.Ind. 1954). For example, where an invention relates to a chemical composition with no known utility, i.e., a patent application for the composition could not be filed (35 U.S.C. 101; 35 U.S.C. 112, first paragraph), continued testing to find utility would likely be permissible under 35 U.S.C. 102(b), absent a sale of the composition or other evidence of commercial exploitation.

II. MARKET TESTING IS NOT PERMITTED[edit | edit source]

Experimentation to determine product acceptance, i.e., market testing, is typical of a trader’s and not an inventor’s experiment and is thus not within the area of permitted experimental activity. Smith & Davis Mfg. Co. v. Mellon, 58 F. 705, 707 (8th Cir. 1893) Likewise, testing of an invention for the benefit of appeasing a customer, or to conduct “minor ‘tune up’ procedures not requiring an inventor’s skills, but rather the skills of a competent technician,” are also not within the exception. In re Theis, 610 F.2d 786, 793, 204 USPQ 188, 193-94 (CCPA 1979).

III. EXPERIMENTAL ACTIVITY IN THE CONTEXT OF DESIGN APPLICATIONS[edit | edit source]

The public use of an ornamental design which is directed toward generating consumer interest in the aesthetics of the design is not an experimental use. In re Mann, 861 F.2d 1581, 8 USPQ2d 2030 (Fed. Cir. 1988) (display of a wrought iron table at a trade show held to be public use). However, “experimentation directed to functional features of a product also containing an ornamental design may negate what otherwise would be considered a public use within the meaning of section 102(b).” Tone Brothers, Inc. v. Sysco Corp., 28 F.3d 1192, 1196, 31 USPQ2d 1321, 1326 (Fed. Cir. 1994) (A study wherein students evaluated the effect of the functional features of a spice container design may be considered an experimental use.).

2133.03(e)(7) Activity of an Independent Third Party Inventor[edit | edit source]

EXPERIMENTAL USE EXCEPTION IS PERSONAL TO AN APPLICANT

The statutory bars of 35 U.S.C. 102(b) are applicable even though public use or on sale activity is by a party other than an applicant. Where an applicant presents evidence of experimental activity by such other party, the evidence will not overcome the prima faciecase under 35 U.S.C. 102(b) based upon the activity of such party unless the activity was under the supervision and control of the applicant. Magnetics v. Arnold Eng’g Co., 438 F.2d 72, 74, 168 USPQ 392, 394 (7th Cir. 1971), Bourne v. Jones, 114 F.Supp. 413, 419, 98 USPQ 206, 210 (S.D. Fla. 1951), aff'd., 207 F.2d 173, 98 USPQ 205 (5th Cir. 1953), cert. denied, 346 U.S. 897, 99 USPQ 490 (1953); contra, Watson v. Allen, 254 F.2d 342, 117 USPQ 68 (D.C.Cir. 1957). In other words, the experimental use activity exception is personal to an applicant.