Fred Gibb, Gibb IP Law (301) 261-8071 35 U.S.C.102(b) Bars

Fred Gibb, Gibb IP Law (301) 261-8071

35 U.S.C.102(b) Bars35 U.S.C.102(b) Bars


StatuteStatute

35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.

A person shall be entitled to a patent unless . . . (b) the invention was . . . in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States


Section 102 AnalysisSection 102 Analysis 35 U.S.C. § 102(a)35 U.S.C. § 102(a)

Known or used, patented or described in a printed publication “by others”, before Known or used, patented or described in a printed publication “by others”, before the “invention thereof by the applicant”the “invention thereof by the applicant”

Use or publication must be “by another” and the printing date of the publication or Use or publication must be “by another” and the printing date of the publication or patent must pre-date applicant’s filing datepatent must pre-date applicant’s filing date

35 U.S.C. § 102(b)35 U.S.C. § 102(b) Patented or described in a printed publication (by anyone, including the applicant), Patented or described in a printed publication (by anyone, including the applicant),

in public use or on sale more than one year before inventionin public use or on sale more than one year before invention by applicant by applicant Sale, use, or publication can be by applicant, but activity and printing date must Sale, use, or publication can be by applicant, but activity and printing date must

pre-date filing date by one yearpre-date filing date by one year 35 U.S.C. § 102(c) Applicant must not have abandoned the invention35 U.S.C. § 102(c) Applicant must not have abandoned the invention 35 U.S.C. § 102(d) Foreign application filed by applicant more than 12 months 35 U.S.C. § 102(d) Foreign application filed by applicant more than 12 months

prior to U.S. applicationprior to U.S. application 35 U.S.C. § 102(e) 35 U.S.C. § 102(e)

Published Applications and Patents “by another” that have a “filing date” before Published Applications and Patents “by another” that have a “filing date” before applicant’s filing dateapplicant’s filing date

Applies to another’s patents that were printed after, but were filed before, Applies to another’s patents that were printed after, but were filed before, applicant’s filing dateapplicant’s filing date

35 U.S.C. § 102(f): Inventor “did not himself invent” (usually confidential 35 U.S.C. § 102(f): Inventor “did not himself invent” (usually confidential documents)documents)

35 U.S.C. § 102(g): Interferences and previous invention by another that were 35 U.S.C. § 102(g): Interferences and previous invention by another that were “not abandoned, suppressed, or concealed” (usually confidential documents)“not abandoned, suppressed, or concealed” (usually confidential documents)


Policy ConsiderationsPolicy Considerations

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

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

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


Keeping SecretsKeeping Secrets Secrecy or Non-Secrecy is not Necessarily Secrecy or Non-Secrecy is not Necessarily

Dispositive on the Issue of “Public Use”Dispositive on the Issue of “Public Use” The fact that the device was not hidden from view does The fact that the device was not hidden from view does

not necessarily make the use public. not necessarily make the use public. TP Labs., Inc.TP Labs., Inc. v.v. Professional Positioners, Inc.Professional Positioners, Inc., 724 F.2d 965, 972, 220 , 724 F.2d 965, 972, 220 USPQ 577, 583 (Fed. Cir. 1983) USPQ 577, 583 (Fed. Cir. 1983)

Similarly, just because a device is kept secret does not Similarly, just because a device is kept secret does not necessarily make the use non-public. necessarily make the use non-public. TP Labs., Inc.TP Labs., Inc. v.v. Professional Positioners, Inc.Professional Positioners, Inc., 724 F.2d 965, 972, 220 , 724 F.2d 965, 972, 220 USPQ 577, 583 (Fed. Cir. 1983). An inventor who puts a USPQ 577, 583 (Fed. Cir. 1983). An inventor who puts a machine or article embodying the invention in public machine or article embodying the invention in public view is barred from obtaining a patent, even though the view is barred from obtaining a patent, even though the invention was secretly hidden in the machine. invention was secretly hidden in the machine. In re In re BlaisdellBlaisdell, 242 F.2d 779, 783, 113 USPQ 289, 292 (CCPA , 242 F.2d 779, 783, 113 USPQ 289, 292 (CCPA 1957); 1957); HallHall v. Macneale, v. Macneale, 107 U.S. 90, 96-97 (1882); 107 U.S. 90, 96-97 (1882); Ex Ex parteparte KukloKuklo, 25 USPQ2d 1387, 1390 (Bd. Pat. App. & , 25 USPQ2d 1387, 1390 (Bd. Pat. App. & Inter. 1992) Inter. 1992)


Experimental Use DoctrineExperimental Use Doctrine Experimental Use DoctrineExperimental Use Doctrine

The doctrine provides that even if the use or sale was public, The doctrine provides that even if the use or sale was public, if it was experimental, there is no bar under 35 U.S.C. if it was experimental, there is no bar under 35 U.S.C. 102(b).102(b).

For example, an inventor may need to “test” the invention For example, an inventor may need to “test” the invention to see how the public uses the invention (or if the public is to see how the public uses the invention (or if the public is even capable of using the invention as designed). This even capable of using the invention as designed). This otherwise public use does not operate as a bar.otherwise public use does not operate as a bar.

A use or sale is experimental for purposes of section 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 if it represents a bona fide effort to perfect the invention or to ascertain whether it will answer its intended purpose. to ascertain whether it will answer its intended purpose. Any commercial exploitation activities must be merely Any commercial exploitation activities must be merely incidental to the primary purpose of experimentation incidental to the primary purpose of experimentation LaBounty Mfg. v. United States Int'l Trade Comm'n, 958 F.2d LaBounty Mfg. v. United States Int'l Trade Comm'n, 958 F.2d 1066, 1071, 22 USPQ2d 1025, 1028 (Fed. Cir. 1992) 1066, 1071, 22 USPQ2d 1025, 1028 (Fed. Cir. 1992) (quoting Pennwalt Corp. v. Akzona Inc., 740 F.2d 1573, (quoting Pennwalt Corp. v. Akzona Inc., 740 F.2d 1573, 1581, 222 USPQ 833, 838 (Fed. Cir. 1984)).1581, 222 USPQ 833, 838 (Fed. Cir. 1984)).


Experimental Use DoctrineExperimental Use Doctrine How Can Any “Sale” Not Be A Commercial How Can Any “Sale” Not Be A Commercial

Exploitation?Exploitation? Answer: when the “sale” is made to others in the hope Answer: when the “sale” is made to others in the hope

to find 35 U.S.C. 101 “utility” if the invention (e.g., some to find 35 U.S.C. 101 “utility” if the invention (e.g., some chemical composition) otherwise has no known utility, chemical composition) otherwise has no known utility, and the profit made off the same is insignificant. and the profit made off the same is insignificant. General General Motors Corp. v. Bendix Aviation Corp.Motors Corp. v. Bendix Aviation Corp., 123 F. Supp. 506, , 123 F. Supp. 506, 521, 102 USPQ 58, 69 (N.D.Ind. 1954). 521, 102 USPQ 58, 69 (N.D.Ind. 1954).

The experimental use exception does not include market The experimental use exception does not include market testing where the inventor is attempting to gauge testing where the inventor is attempting to gauge consumer demand for his claimed invention. This is consumer demand for his claimed invention. This is commercial exploitation and not experimentation." In re commercial exploitation and not experimentation." In re Smith, 714 F.2d 1127, 1134, 218 USPQ 976, 983 (Fed. Smith, 714 F.2d 1127, 1134, 218 USPQ 976, 983 (Fed. Cir. 1983).Cir. 1983).


Just Having Some Fun With Your Just Having Some Fun With Your Invention?Invention?

There is no “public use” if inventor There is no “public use” if inventor restricted use to locations where restricted use to locations where there was a reasonable expectation there was a reasonable expectation of privacy and the use was for his or of privacy and the use was for his or her own enjoyment, even if others her own enjoyment, even if others saw the invention. Moleculon saw the invention. Moleculon Research Corp. v. CBS, Inc., 793 F.2d Research Corp. v. CBS, Inc., 793 F.2d 1261, 1265, 229 USPQ 805, 809 1261, 1265, 229 USPQ 805, 809 (Fed. Cir. 1986).(Fed. Cir. 1986).


What About Other’s Activities?What About Other’s Activities?

Related Third Parties (Those Working With Related Third Parties (Those Working With the Inventor)the Inventor) "Public use" of a claimed invention under 35 "Public use" of a claimed invention under 35

U.S.C. 102(b) occurs when the inventor allows U.S.C. 102(b) occurs when the inventor allows another person to use the invention without another person to use the invention without limitation, restriction or obligation of secrecy to limitation, restriction or obligation of secrecy to the inventor. In re Smith, 714 F.2d 1127, 1134, the inventor. In re Smith, 714 F.2d 1127, 1134, 218 USPQ 976, 983 (Fed. Cir. 1983). 218 USPQ 976, 983 (Fed. Cir. 1983).

Contrast with situations where there is a Contrast with situations where there is a reasonable expectation of privacy and there is reasonable expectation of privacy and there is no public use. Moleculon Research Corp. v. no public use. Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1265, 229 USPQ 805, CBS, Inc., 793 F.2d 1261, 1265, 229 USPQ 805, 809 (Fed. Cir. 1986).809 (Fed. Cir. 1986).


Third PartiesThird Parties Unrelated Third PartiesUnrelated Third Parties (Those Independently Developing the (Those Independently Developing the

Same Invention)Same Invention) Any "nonsecret" use of an invention by someone unconnected to the Any "nonsecret" use of an invention by someone unconnected to the

inventor, such as someone who has independently made the invention, 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 in the ordinary course of a business for trade or profit may be a "public use," use," Bird Provision Co. v. Owens Country SausageBird Provision Co. v. Owens Country Sausage, , Inc.Inc., 568 F.2d 369, , 568 F.2d 369, 374-76, 197 USPQ 134, 138-40 (5th Cir. 1978). 374-76, 197 USPQ 134, 138-40 (5th Cir. 1978).

If the details of an inventive process are not ascertainable from the 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 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 a trade secret then that use is not a public use and will not bar a patent issuing to someone unconnected to the user. issuing to someone unconnected to the user. W.L. Gore & Assocs. v. W.L. Gore & Assocs. v. Garlock, Inc.Garlock, Inc., 721 F.2d 1540, 1550, 220 USPQ 303, 310 (Fed. Cir. , 721 F.2d 1540, 1550, 220 USPQ 303, 310 (Fed. Cir. 1983). Contrast this with the Inventor’s activities, where an opposite 1983). Contrast this with the Inventor’s activities, where an opposite result is reached.result is reached.

The experimental use doctrine does not apply to experimental The experimental use doctrine does not apply to experimental activities of a third unrelated party and is personal to the applicant. activities of a third unrelated party and is personal to the applicant. Magnetics v. Arnold Eng'g Co.Magnetics v. Arnold Eng'g Co., 438 F.2d 72, 74, 168 USPQ 392, 394 , 438 F.2d 72, 74, 168 USPQ 392, 394 (7th Cir. 1971), (7th Cir. 1971), Bourne v. JonesBourne v. Jones, 114 F.Supp. 413, 419, 98 USPQ 206, , 114 F.Supp. 413, 419, 98 USPQ 206, 210 (S.D. Fla. 1951), 210 (S.D. Fla. 1951), aff"daff"d., 207 F.2d 173, 98 USPQ 205 (5th Cir. 1953), ., 207 F.2d 173, 98 USPQ 205 (5th Cir. 1953), cert. deniedcert. denied, 346 U.S. 897, 99 USPQ 490 (1953); contra, , 346 U.S. 897, 99 USPQ 490 (1953); contra, Watson v. Watson v. AllenAllen, 254 F.2d 342, 117 USPQ 68 (D.C.Cir. 1957). , 254 F.2d 342, 117 USPQ 68 (D.C.Cir. 1957).


HR 2795HR 2795

Possible Future 102(b) ChangesPossible Future 102(b) Changes H.R. 2795, if enacted in current form, H.R. 2795, if enacted in current form,

would alter the “one-year grace period” would alter the “one-year grace period” to apply only to inventor activities.to apply only to inventor activities.

Third parties activities (public uses, Third parties activities (public uses, offers for sale, etc.) would have no grace offers for sale, etc.) would have no grace period.period.


How Much Public Use Is Needed?How Much Public Use Is Needed?

Some Actual Public Use is Needed Some Actual Public Use is Needed 35 U.S.C. 102(b) bars public use or sale, not public 35 U.S.C. 102(b) bars public use or sale, not public

knowledge. knowledge. TPTP Labs., Inc., v. Professional Positioners, Labs., Inc., v. Professional Positioners, Inc.Inc., 724 F.2d 965, 970, 220 USPQ 577, 581 (Fed. Cir. , 724 F.2d 965, 970, 220 USPQ 577, 581 (Fed. Cir. 1984). Note, however, that public knowledge may 1984). Note, however, that public knowledge may provide grounds for rejection under 35 U.S.C. 102(a). provide grounds for rejection under 35 U.S.C. 102(a). See MPEP § 2132.See MPEP § 2132.

But, Only One Instance is NeededBut, Only One Instance is Needed. . It is not necessary that more than one of the patent It is not necessary that more than one of the patent

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


How Complete Does The Invention How Complete Does The Invention Have to Be?Have to Be?

For Public UseFor Public Use It is assumed that the invention is substantially It is assumed that the invention is substantially

complete if it can be used in public, so most of complete if it can be used in public, so most of the cases deal with the “on sale” aspect of a the cases deal with the “on sale” aspect of a partially developed invention.partially developed invention.

However, Obviousness AppliesHowever, Obviousness Applies 35 U.S.C. 103 may create a bar to patentability 35 U.S.C. 103 may create a bar to patentability

if the device in public use or placed on sale if the device in public use or placed on sale would have made the claimed invention would have made the claimed invention obvious (in conjunction with prior art). obvious (in conjunction with prior art). LaBounty MfgLaBounty Mfg. . v.v. United States Int'l Trade United States Int'l Trade Comm'n, Comm'n, 958 F.2d 1066, 1071, 22 USPQ2d 958 F.2d 1066, 1071, 22 USPQ2d 1025, 1028 (Fed. Cir. 1992) 1025, 1028 (Fed. Cir. 1992)


Sale or Offer for Sale of Partially Sale or Offer for Sale of Partially Complete InventionComplete Invention

Invention Must Be “Ready for Patenting” at the Time of the Sale or Invention Must Be “Ready for Patenting” at the Time of the Sale or OfferOffer

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

So What Could “Ready for Patenting” Possibly Mean?So What Could “Ready for Patenting” Possibly Mean? An actual reduction to practice.An actual reduction to practice.

Actual reduction to practice in the context of an on-sale bar issue usually 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 requires testing under actual working conditions in such a way as to demonstrate the practical utility of an invention for its intended purpose 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 beyond the probability of failure, unless by virtue of the very simplicity of an invention its practical operativeness is clear. invention its practical operativeness is clear. Field v. KnowlesField v. Knowles, 183 F.2d 593, , 183 F.2d 593, 601, 86 USPQ 373, 379 (CCPA 1950); 601, 86 USPQ 373, 379 (CCPA 1950); Steinberg v. SeitzSteinberg v. Seitz, 517 F.2d 1359, 1363, , 517 F.2d 1359, 1363, 186 USPQ 209, 212 (CCPA 1975) 186 USPQ 209, 212 (CCPA 1975)

Drawings, etc. that would allow one ordinarily skilled in the art to practice Drawings, etc. that would allow one ordinarily skilled in the art to practice the invention.the invention.

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

Affidavits or declarations submitted under 37 CFR 1.131 to swear behind a Affidavits or declarations submitted under 37 CFR 1.131 to swear behind a reference may constitute, among other things, an admission that an invention 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 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. 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 E.I. duPont de Nemours & Co., 489 F.2d 1359, 1365, 179 USPQ 392, 396 (7th Cir. 1973). Also see MPEP § 715.10Cir. 1973). Also see MPEP § 715.10


Strange But True!Strange But True!

If a product that is offered for sale If a product that is offered for sale inherently possesses each of the inherently possesses each of the limitations of the claims, then the limitations of the claims, then the invention is on sale, whether or not the invention is on sale, whether or not the parties to the transaction recognize parties to the transaction recognize that the product possesses the claimed that the product possesses the claimed characteristics." characteristics." Abbott Laboratories v. Abbott Laboratories v. Geneva Pharmaceuticals, Inc.,Geneva Pharmaceuticals, Inc., 182 182 F.3d 1315, 1319, 51 USPQ2d 1307, F.3d 1315, 1319, 51 USPQ2d 1307, 1310 (Fed. Cir. 1999) .1310 (Fed. Cir. 1999) .


Sales and Method ClaimsSales and Method Claims Sale of a product made by the claimed process by the patentee or a 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 licensee would constitute a sale of the process within the meaning of 35 U.S.C. 102(b). In re Kollar, 286 F.3d 1326, 1333, 62 USPQ2d 1425, 1429 U.S.C. 102(b). In re Kollar, 286 F.3d 1326, 1333, 62 USPQ2d 1425, 1429 (Fed. Cir. 2002); D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144, (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).1147-48, 219 USPQ 13, 15-16 (Fed. Cir. 1983).

Even though the sale of a product made by a claimed method before the 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 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. 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, Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550, 220 USPQ 303, 310 (Fed. Cir. 1983). 310 (Fed. Cir. 1983).

The application of 35 U.S.C. 102(b) would also be triggered by actually The application of 35 U.S.C. 102(b) would also be triggered by actually performing or offering to perform the claimed process itself for performing or offering to perform the claimed process itself for consideration. See Scaltech, Inc. v. Retec/Tetra, L.L.C., 269 F.3d 1321, consideration. See Scaltech, Inc. v. Retec/Tetra, L.L.C., 269 F.3d 1321, 1328, 60 USPQ2d 1687, 1691(Fed. Cir. 2001) where the patentee made an 1328, 60 USPQ2d 1687, 1691(Fed. Cir. 2001) where the patentee made an offer to perform the claimed process for treating oil refinery waste more offer to perform the claimed process for treating oil refinery waste more than one year before filing the patent application. than one year before filing the patent application.

The sale of a device embodying a claimed process can trigger the on-sale The sale of a device embodying a claimed process can trigger the on-sale bar. Minton v. National Ass'n. of Securities Dealers, Inc., 336 F.3d 1373, bar. Minton v. National Ass'n. of Securities Dealers, Inc., 336 F.3d 1373, 1378, 67 USPQ2d 1614, 1618 (Fed. Cir. 2003). Sale of a fully operational 1378, 67 USPQ2d 1614, 1618 (Fed. Cir. 2003). Sale of a fully operational computer program implementing and thus embodying the claimed method computer program implementing and thus embodying the claimed method (potentially within a device) triggered the on-sale bar.(potentially within a device) triggered the on-sale bar.


Non-Disclosure/Confidentiality Non-Disclosure/Confidentiality AgreementsAgreements

The presence or absence of a confidentiality The presence or absence of a confidentiality agreement is not dispositive of the public agreement is not dispositive of the public use issue, but is one factor to be considered use issue, but is one factor to be considered in assessing all the evidence. It is in assessing all the evidence. It is necessary to analyze the totality of necessary to analyze the totality of circumstances in the case against policies circumstances in the case against policies that underlie the public use and on sale bar. that underlie the public use and on sale bar. Bernhardt, L.L.C. v. Collezione Europa USA, Bernhardt, L.L.C. v. Collezione Europa USA, Inc.Inc., 386 F.3d 1371, 1380-81, 72 USPQ2d, , 386 F.3d 1371, 1380-81, 72 USPQ2d, 1901, 1909 (Fed. Cir. 2004) 1901, 1909 (Fed. Cir. 2004)


““Sale” Not Tied to “Public Use”Sale” Not Tied to “Public Use”

Either the “public use” or “on sale” activity may Either the “public use” or “on sale” activity may apply when the other does not. apply when the other does not. Dart Indus. v. Dart Indus. v. E.I. du Pont de Nemours & CoE.I. du Pont de Nemours & Co., 489 F.2d 1359, ., 489 F.2d 1359, 1365, 179 USPQ 392, 396 (7th Cir. 1973). 1365, 179 USPQ 392, 396 (7th Cir. 1973).

There may be a public use of an invention There may be a public use of an invention absent any sales activity. Likewise, there may absent any sales activity. Likewise, there may be a nonpublic, e.g., "secret," sale or offer to be a nonpublic, e.g., "secret," sale or offer to sell an invention which nevertheless constitutes sell an invention which nevertheless constitutes a statutory bar. a statutory bar. Hobbs v.Hobbs v. United StatesUnited States, 451 , 451 F.2d 849, 859-60, 171 USPQ 713, 720 (5th Cir. F.2d 849, 859-60, 171 USPQ 713, 720 (5th Cir. 1971) 1971)


The EndThe End

Thank You.Thank You.

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Fred Gibb, Gibb IP Law (301) 261-8071 35 U.S.C.102(b) Bars