How does reduction to practice relate to the on-sale bar in patent law?
Reduction to practice and the on-sale bar are closely related concepts in patent law, particularly in determining the critical date for patentability. The MPEP 2138.05 does not directly address this relationship, but it’s important to understand their interaction:
- The on-sale bar, codified in 35 U.S.C. 102(a)(1), prevents patenting an invention that was on sale more than one year before the filing date of the patent application.
- Reduction to practice can be relevant in determining whether the invention was ready for patenting at the time of the alleged sale.
- An invention does not need to be actually reduced to practice to trigger the on-sale bar. The Supreme Court in Pfaff v. Wells Electronics, Inc. established that the on-sale bar can apply if the invention is “ready for patenting,” which can be shown by proof of reduction to practice or by evidence that the inventor had prepared drawings or other descriptions sufficient to enable a person skilled in the art to practice the invention.
Key considerations:
- Actual reduction to practice before a sale can provide strong evidence that the invention was ready for patenting.
- Even without actual reduction to practice, detailed drawings or descriptions that would enable one skilled in the art to practice the invention can satisfy the “ready for patenting” requirement.
- Inventors should be cautious about commercial activities related to their invention before filing a patent application, as these could potentially trigger the on-sale bar.
Understanding the relationship between reduction to practice and the on-sale bar is crucial for inventors and patent practitioners in timing patent applications and managing commercial activities related to inventions.
To learn more:
Topics:
MPEP 2100 - Patentability,
MPEP 2138.05 - "Reduction To Practice",
Patent Law,
Patent Procedure