2133.02(a) Overcoming a Pre-AIA 35 U.S.C. 102(b) Rejection Based on a Printed Publication or Patent [R-10.2019]

In all applications, an applicant may overcome a pre-AIA 35 U.S.C. 102 rejection by persuasively arguing that the claims are patentably distinguishable from the prior art, or by amending the claims to patentably distinguish over the prior art. Additional ways available to overcome a rejection based on pre-AIA 35 U.S.C. 102 prior art depend on the applicable paragraph of pre-AIA 35 U.S.C. 102. See MPEP § 2132.01 for overcoming a rejection under pre-AIA 35 U.S.C. 102(a) and MPEP § 2136.05et seq. for overcoming a rejection under pre-AIA 35 U.S.C. 102(e).

A rejection based on pre-AIA 35 U.S.C. 102(b) can be overcome by:

• (A) Persuasively arguing that the claims are patentably distinguishable from the prior art;
• (B) Amending the claims to patentably distinguish over the prior art;
• (C) Submitting and perfecting a benefit claim under 35 U.S.C. 120, within the time period set in 37 CFR 1.78 (or by filing a grantable petition to accept an unintentionally delayed claim under 37 CFR 1.78 as explained in MPEP § 211.04):
  • (1)
    • (a) for applications filed on or after September 16, 2012, by filing a corrected application data sheet under 37 CFR 1.76 which contains a specific reference to a prior application in accordance with 37 CFR 1.78, or
    • (b) for applications filed prior to September 16, 2012, by amending the specification of the application to contain a specific reference to a prior application or by filing a corrected application data sheet under 37 CFR 1.76 which contains a specific reference to a prior application in accordance with 37 CFR 1.78,

    and

  • (2) by establishing that the prior application satisfies the enablement and written description requirements of 35 U.S.C. 112(a) (for applications filed on or after September 16, 2012), or 35 U.S.C. 112, first paragraph (for applications filed prior to September 16, 2012). See MPEP § 211 et seq.;

  or

• (D) Submitting and perfecting a benefit claim under 35 U.S.C. 119(e) by complying with the requirements of 37 CFR 1.78 or filing a grantable petition to accept an unintentionally delayed claim under 37 CFR 1.78 (see item (C) above). Because a provisional application could not have been filed more than one year prior to the filing of a nonprovisional application that claims benefit to the provisional application, once the benefit claim under 35 U.S.C. 119(e) is perfected, the rejection must be reconsidered to determine whether the prior art still qualifies as prior art under pre-AIA 35 U.S.C. 102(b) or whether the prior art qualifies as prior art under pre-AIA 35 U.S.C. 102(a). Note, however, effective December 18, 2013, title II of the Patent Law Treaties Implementation Act (PLTIA) provides for restoration of the right to claim benefit of a provisional application filed after the expiration of the twelve-month period in 35 U.S.C. 119(e). See MPEP § 211.01(a), subsection II. If the prior art qualifies as prior art under pre-AIA 35 U.S.C. 102(a), see MPEP § 2132.01 as to how to overcome the pre-AIA 35 U.S.C. 102(a) rejection.

2133.03(a) “Public Use” [R-07.2022]

[Editor Note: This MPEP section may be applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note) . See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions. See MPEP § 2152.02(c) through (e) for a detailed discussion of the public use and on sale provisions of AIA 35 U.S.C. 102.]

I. TEST FOR “PUBLIC USE”

The public use bar under pre-AIA 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 [pre-AIA] § 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 PRE-AIA 35 U.S.C. 102(b)

Mere knowledge of the invention by the public does not warrant rejection under pre-AIA 35 U.S.C. 102(b). Pre-AIA 35 U.S.C. 102(b) bars public use or sale, not public knowledge. TPLabs., 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 pre-AIA 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 pre-AIA 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 pre-AIA 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); Hallv. 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, subsection I. 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 pre-AIA 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 unclaimed aspects of the device were not publicly available. Lockwood v. American Airlines, Inc., 107 F.3d 1505, 1570-71, 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 inventor 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 inventor, 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 inventor is not sufficiently “informing,” there may be adequate grounds upon which to base a rejection under pre-AIA 35 U.S.C. 102(f) and pre-AIA 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” [R-07.2022]

[Editor Note: This MPEP section may be applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). AIA 35 U.S.C. 102(a)(1) uses the same “on sale” term as pre-AIA 35 U.S.C. 102(b) and is treated as having the same meaning. Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 139 S.Ct. 628 (2019). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions. See MPEP § 2152.02(c) through (e) for a detailed discussion of the public use and on sale provisions of AIA 35 U.S.C. 102.]

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 claimed invention 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 pre-AIA 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 (July 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”

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 pre-AIA 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.).

“[T]o be ‘on sale’ under [pre-AIA] § 102(b), a product must be the subject of a commercial sale or offer for sale,” and to be a commercial sale it must be “one that bears the general hallmarks of a sale pursuant to Section 2-106 of the Uniform Commercial Code.” Medicines Co. v. Hospira, Inc., 827 F.3d 1363, 1364, 119 USPQ2d 1329, 1330 (Fed. Cir. 2016) (en banc). The court in Medicines Co. went on to explain “[s]ection 2-106(1) of the Uniform Commercial Code describes a ‘sale’ as ‘the passing of title from the seller to the buyer for a price.’ U.C.C. § 2-106(1). The passage of title is a helpful indicator of whether a product is ‘on sale,’ as it suggests when the inventor gives up its interest and control over the product.” Id. at 1375, 119 USPQ2d at 1338. The Medicines Co. court held “a contract manufacturer’s sale to the inventor of manufacturing services where neither title to the embodiments nor the right to market the same passes to the supplier does not constitute an invalidating sale under § 102(b).” Id. at 1381, 119 USPQ2d at 1342.

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 pre-AIA 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 pre-AIA 35 U.S.C. 102(b). ConsolidatedFruit-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 [pre-AIA] 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).

“[T]he mere sale of manufacturing services by a contract manufacturer to an inventor to create embodiments of a patented product for the inventor does not constitute a ‘commercial sale’ of the invention.” Medicines Co. v. Hospira, Inc., 827 F.3d 1363, 1373, 119 USPQ2d 1329, 1336 (Fed. Cir. 2016) (en banc). The court in Medicines Co. further stated that “commercial benefit—even to both parties in a transaction—is not enough to trigger the on-sale bar of § 102(b); the transaction must be one in which the product is ‘on sale’ in the sense that it is ‘commercially marketed.’” Id. at 1373-74, 119 USPQ2d at 1336-37.

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 under pre-AIA 35 U.S.C. 102(b) 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

“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 [pre-AIA] §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, 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 pre-AIA 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 BUSINESSA. 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 pre-AIA 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). It is noted that AIA 35 U.S.C. 102(a)(1) uses the same “on sale” term as pre-AIA 35 U.S.C. 102(b) and is treated as having the same meaning. Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 139 S.Ct. 628, 129 USPQ2d 1189 (2019). See MPEP § 2152.02(d).

B. Inventor’s Consent to the Sale Is Not a Prerequisite To Finding an On Sale Bar under pre-AIA 35 U.S.C. 102(b)

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

A. Sales or Offers for Sale by Independent Third Parties May be Prior Art

A sale or offer for sale of the invention by an independent third party more than 1 year before the effective filing date of applicant’s claimed invention may be applied as prior art and may prevent 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 pre-AIA 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” [R-07.2022]

[Editor Note: This MPEP section may be applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions. See MPEP § 2152.02(c) through (e) for a detailed discussion of the public use and on sale provisions of AIA 35 U.S.C. 102.]

I. THE INVENTION MUST BE “READY FOR PATENTING”

In Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 66-68, 48 USPQ2d 1641, 1647 (1998), 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 had 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 claimed invention]. First, the product must be the subject of a commercial offer for sale…. Second, the invention must be ready for patenting.” Id. at 67, 119 S.Ct. at 311-12, 48 USPQ2d at 1646-47.

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 Manufacturing L.P., 424 F.3d 1374, 1379, 76 USPQ2d 1741, 1744 (Fed. Cir. 2005) (“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.” Id. at 67, 199 S.Ct. at 311-12, 48 USPQ2d at 1647 (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.). See also Weatherchem Corp. v. J.L. Clark Inc., 163 F.3d 1326, 1333, 49 USPQ2d 1001, 1006-07 (Fed. Cir. 1998) (The invention was held “ready for patenting” since the detailed drawings of plastic dispensing caps offered for sale “contained each limitation of the claims and were sufficiently specific to enable person skilled in art to practice the invention”.).

If the invention had been 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. Vanmoor v. Wal-Mart Stores, Inc., 201 F.3d 1363, 1366-67, 53 USPQ2d 1377, 1379 (Fed. Cir. 2000) (“Here the pre-critical date sales were of completed cartridges made to specifications that remained unchanged to the present day, showing that any invention embodied in the accused cartridges was reduced to practice before the critical date. The Pfaff ready for patenting condition is also satisfied because the specification drawings, available prior to the critical date, were actually used to produce the accused cartridges.”); In re Hamilton, 882 F.2d 1576, 1580, 11 USPQ2d 1890, 1893 (Fed. Cir. 1989). "If a product that is offered for sale inherently possesses each of the limitations of the claims, then the invention is on sale, whether or not the parties to the transaction recognize that the product possesses the claimed characteristics." Abbott Laboratories v. Geneva Pharmaceuticals, Inc., 182 F.3d 1315, 1319, 51 USPQ2d 1307, 1310 (Fed. Cir. 1999) (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.); STX LLC. v. Brine Inc., 211 F.3d 588, 591, 54 USPQ2d 1347, 1350 (Fed. Cir. 2000) (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. Field v. Knowles, 183 F.2d 593, 601, 86 USPQ 373, 379 (CCPA 1950); Steinberg v. Seitz, 517 F.2d 1359, 1363, 186 USPQ 209, 212 (CCPA 1975).

The invention need not be ready for satisfactory commercial marketing for sale to bar a patent. Atlantic Thermoplastics Co. v. Faytex Corp., 970 F.2d 834, 836-37, 23 USPQ2d 1481, 1483 (Fed. Cir. 1992).

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. See In re Foster, 343 F.2d 980, 987-88, 145 USPQ 166, 173 (CCPA 1965); Dart Indus. v. E.I. duPont de Nemours & Co., 489 F.2d 1359, 1365, 179 USPQ 392, 396 (7th Cir. 1973). Also see MPEP § 715.10.

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.” In re Kollar, 286 F.3d 1326, 1332, 62 USPQ2d 1425, 1429 (Fed. Cir. 2002). 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). See id. at 1333, 62 USPQ2d at 1429; D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144, 1147-48, 219 USPQ 13, 15-16 (Fed. Cir. 1983) (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); W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550, 220 USPQ 303, 310 (Fed. Cir. 1983). The application of pre-AIA 35 U.S.C. 102(b) would also be triggered by actually performing the claimed process itself for consideration. See Scaltech, Inc. v. Retec/Tetra, L.L.C., 269 F.3d 1321, 1328, 60 USPQ2d 1687, 1691(Fed. Cir. 2001) (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). Moreover, the sale of a device embodying a claimed process may trigger the on-sale bar. Minton v. National Ass’n. of Securities Dealers, Inc., 336 F.3d 1373, 1378, 67 USPQ2d 1614, 1618 (Fed. Cir. 2003) (finding a fully operational computer program implementing and thus embodying the claimed method to 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. Poly-America LP v. GSE Lining Tech. Inc., 383 F.3d 1303, 1308-09, 72 USPQ2d 1685, 1688-89 (Fed. Cir. 2004) (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).

2133.03(d) “In This Country” [R-10.2019]

[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions. See MPEP § 2152.02(c) through (e) for a detailed discussion of the public use and on sale provisions of AIA 35 U.S.C. 102.]

The language “in this country” in pre-AIA 35 U.S.C. 102(b) does not include other WTO or NAFTA member countries, but includes any State of the United States, the District of Columbia, and any commonwealth, territory, or possession of the United States. See also 35 U.S.C. 105. For purposes of judging the applicability of the pre-AIA 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. Gandy v. Main Belting Co., 143 U.S. 587, 593 (1892). However, “on sale” status can be found if substantial activity prefatory to a “sale” occurs in the United States. Robbins Co. v. Lawrence Mfg. Co., 482 F.2d 426, 433, 178 USPQ 577, 583 (9th Cir. 1973). 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. CTS Corp. v. Piher Int’l Corp., 593 F.2d 777, 201 USPQ 649 (7th Cir. 1979).

2133.03(e) Permitted Activity; Experimental Use [R-07.2022]

[Editor Note: This MPEP section may be applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions. See MPEP § 2152.02(c) through (e) for a detailed discussion of the public use and on sale provisions of AIA 35 U.S.C. 102.]

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 in order for the sale to be a permitted activity that does not create a bar under pre-AIA 35 U.S.C. 102(b).

If the use or sale was experimental, there is no bar under pre-AIA 35 U.S.C. 102(b). “A use or sale is experimental for purposes of [pre-AIA] 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).