OnSale Bar For Sale Sale or offer for
On-Sale Bar For Sale • 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. • See Pfaff v. Wells Electronics, Inc.
Pfaff v. Wells 4/8/81 4/19/81 The “Critical Date” for the Patent Application Texas Instruments places P. O. for 30, 100 new chip carriers 7/81 Order Filled 4/19/82 Pfaff Files Patent Application
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. . .
[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
Group One, Ltd. v. Hallmark Cards, Inc. 254 F. 3 d 1041 C. 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.
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. ”
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 laterpatented method. "
• “[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. Mc. Kechnie 322 F. 3 d 1335, 1348 (Fed. Cir. 2003)
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