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The On-Sale Bar and the AIA

Posted Monday, February 18, 2013 by Mike Cicero

For over half a century, 35 U.S.C. §102(b) has prevented patents from being granted for inventions which have been “on-sale in this country, more than one year prior to the date of the application for patent in the United States.” There are at least two main purposes of this statutory bar. First, it prevents a patent from being granted on inventions which have been the subject of sales over periods of time long enough to entice others to make, use, sell, or import the invention under the belief that the subject matter was within the public domain. From this perspective, the presence of the statutory bar demonstrates the patent law’s opposition to removing subject matter from the public domain. After all, the United States has taken a utilitarian view toward the function of patents and considers their main purpose to fuel innovation in order to eventually increase the pool of public knowledge. Second, the statutory on-sale bar prevents inventors from effectively extending the patent term by benefiting commercially from the invention only to file for patent protection once competitive forces arise. The pre-America Invents Act (AIA) is, however, friendly to inventors in that it provides a one year grace period during which inventors may test the market to determine whether the benefit of obtaining a patent would be worth the associated cost.

The AIA contains two provisions that, when read together, provide an on-sale bar analogous to that of the pre-AIA §102(b). Under the AIA, 35 U.S.C. §102(a)(1) provides that a patent will not be granted for inventions that were “on-sale, or otherwise available to the public before the effective filing date of the claimed invention.” According to the new §102(a)(1) a sale or offer for sale anywhere in the world will bar patentability of an invention whereas under pre-AIA law only activities within the United States could create such a bar. The AIA’s new 35 U.S.C. §102(b)(1) prevents disclosures, e.g. sale activity, from being prior art under §102(a)(1) when the disclosure was “made 1 year or less before the effective filing date of a claimed invention … [and] the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.” The AIA’s §102(b)(1) allows inventors to engage in sales activities for a limited time prior to filing a patent application without forfeiting potential patent rights. The effect of the AIA’s provisions is to provide a one year grace period similar to existing law. This portion of the AIA will become effective very soon as it applies to all patent applications with an effective filing date on or after March 16, 2013.

An unresolved question as to the implications of the new laws under the AIA is whether on-sale activity must be “available to the public” to constitute an invalidating act. Under the pre-AIA laws even a private sale, i.e. a sale not known or available to the public at large, would trigger the running of the one year countdown. Under the AIA, however, it is unclear whether the words “or otherwise available to the public” will be interpreted to further modify the list of events which may bar patentability. While resolution of this question is pending in the years to come, it will be prudent for inventors to consider the possible effects of differing statutory interpretations and take a conservative approach towards on-sale activities and filing patent applications.

Ruttler Mills PLLC
One Union Square, 1730, 600 University Street, Seattle, Washington 98101 US
47.6097570-122.3321200
Phone: (206) 838-6400

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