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On-Sale Bar

For Sale. On-Sale Bar. Sale or offer for sale Traditionally, required (1) reduction to practice, and (2) sale or offer for sale Now, no “reduction to practice” required- if you sell an uncompleted product, it may bar a patent if the application is filed more than 1 year later.

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On-Sale Bar

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  1. For Sale On-Sale Bar • Sale or offer for sale • Traditionally, required (1) reduction to practice, and (2) sale or offer for sale • Now, no “reduction to practice” required- if you sell an uncompleted product, it may bar a patent if the application is filed more than 1 year later. • SeePfaff v. Wells Electronics, Inc.

  2. 7/81 4/19/82 4/19/81 Pfaff v. Wells 4/8/81 Pfaff Files Patent Application Order Filled The “Critical Date” for the Patent Application Texas Instruments places P.O. for 30,100 new chip carriers

  3. On Sale Bar – Litigation Issues • Sale can be completely confidential and still bar the patent • A truly “secret” form of prior art • Discovery is obviously crucial • Spending time with the shoeboxes . . .

  4. [I]t is evident that Pfaff could have obtained a patent on his novel socket when he accepted the purchase order from Texas Instruments for 30,100 units. At that time he provided the manufacturer with a description and drawings that had "sufficient clearness and precision to enable those skilled in the matter" to produce the device. -- 525 U.S. 55, 63

  5. Group One, Ltd. v. Hallmark Cards, Inc.254 F.3d 1041C.A.Fed.,2001. [W]e will look to the Uniform Commercial Code ("UCC") to define whether, as in this case, a communication or series of communications rises to the level of a commercial offer for sale.

  6. Hallmark Cards “Because of the importance of having a uniform national rule regarding the on-sale bar, we hold that the question of whether an invention is the subject of a commercial offer for sale is a matter of Federal Circuit law, to be analyzed under the law of contracts as generally understood.”

  7. Problems with Hallmark? Lacks "(1) vigorously solicited wheel manufacturers to whom Lacks could sell overlays and on whose wheels Lacks could perform its overlay- bonding method, and (2) vigorously solicited [original equipment manufacturers] to specify and purchase wheels clad by the later-patented method."

  8. “[T]he Special Master did not find this activity, nor any other of Lacks' activities, to be a commercial offer for sale as defined by contract law.” • Lacks Industries, Inc. v. McKechnie 322 F.3d 1335, 1348 (Fed. Cir. 2003)

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