MPEP § 2133.03 — Rejections Based on “Public Use” or “On Sale” (Annotated Rules)
§2133.03 Rejections Based on “Public Use” or “On Sale”
This page consolidates and annotates all enforceable requirements under MPEP § 2133.03, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Rejections Based on “Public Use” or “On Sale”
This section addresses Rejections Based on “Public Use” or “On Sale”. Primary authority: 35 U.S.C. 102, 35 U.S.C. 102(a), and 35 U.S.C. 102(b). Contains: 2 prohibitions, 2 guidance statements, 3 permissions, and 10 other statements.
Key Rules
On Sale Under AIA (MPEP 2152.02(d))
[Editor Note: This MPEP section is applicable regardless of whether an application is examined under the AIA or under pre-AIA law. For applications subject to the first inventor to file (FITF) provisions of the AIA, the relevant time is “before the effective filing date of the claimed invention". For applications subject to pre-AIA 35 U.S.C. 102, the relevant time is “at the time of the invention”. 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. Many of the court decisions discussed in this section involved applications or patents subject to pre-AIA 35 U.S.C. 102. These court decisions may be applicable to applications and patents subject to AIA 35 U.S.C. 102 but the relevant time is before the effective filing date of the claimed invention and not at the time of the invention.]
Pre-AIA 35 U.S.C. 102(b) “contains several distinct bars to patentability, each of which relates to activity or disclosure more than one year prior to the date of the application. Two of these – the ‘public use’ and the ‘on sale’ objections – are sometimes considered together although it is quite clear that either may apply when the other does not.” Dart Indus. v. E.I. du Pont de Nemours & Co., 489 F.2d 1359, 1365, 179 USPQ 392, 396 (7th Cir. 1973). There may be a public use of an invention absent any sales activity. Likewise, there may be a nonpublic, e.g., “secret,” sale or offer to sell an invention which nevertheless constitutes a statutory bar. Hobbs v. United States, 451 F.2d 849, 859-60, 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).
Pre-AIA 35 U.S.C. 102(b) “contains several distinct bars to patentability, each of which relates to activity or disclosure more than one year prior to the date of the application. Two of these – the ‘public use’ and the ‘on sale’ objections – are sometimes considered together although it is quite clear that either may apply when the other does not.” Dart Indus. v. E.I. du Pont de Nemours & Co., 489 F.2d 1359, 1365, 179 USPQ 392, 396 (7th Cir. 1973). There may be a public use of an invention absent any sales activity. Likewise, there may be a nonpublic, e.g., “secret,” sale or offer to sell an invention which nevertheless constitutes a statutory bar. Hobbs v. United States, 451 F.2d 849, 859-60, 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).
Pre-AIA 35 U.S.C. 102(b) “contains several distinct bars to patentability, each of which relates to activity or disclosure more than one year prior to the date of the application. Two of these – the ‘public use’ and the ‘on sale’ objections – are sometimes considered together although it is quite clear that either may apply when the other does not.” Dart Indus. v. E.I. du Pont de Nemours & Co., 489 F.2d 1359, 1365, 179 USPQ 392, 396 (7th Cir. 1973). There may be a public use of an invention absent any sales activity. Likewise, there may be a nonpublic, e.g., “secret,” sale or offer to sell an invention which nevertheless constitutes a statutory bar. Hobbs v. United States, 451 F.2d 849, 859-60, 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).
Pre-AIA 35 U.S.C. 102(b) “contains several distinct bars to patentability, each of which relates to activity or disclosure more than one year prior to the date of the application. Two of these – the ‘public use’ and the ‘on sale’ objections – are sometimes considered together although it is quite clear that either may apply when the other does not.” Dart Indus. v. E.I. du Pont de Nemours & Co., 489 F.2d 1359, 1365, 179 USPQ 392, 396 (7th Cir. 1973). There may be a public use of an invention absent any sales activity. Likewise, there may be a nonpublic, e.g., “secret,” sale or offer to sell an invention which nevertheless constitutes a statutory bar. Hobbs v. United States, 451 F.2d 849, 859-60, 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).
In similar fashion, not all “public use” and “on sale” activities will necessarily occasion the identical result. Although both activities affect how an inventor may use an invention prior to the filing of a patent application, “non-commercial” pre-AIA 35 U.S.C. 102(b) activity may not be viewed the same as similar “commercial” activity. See MPEP § 2133.03(a) and § 2133.03(e)(1). Likewise, “public use” activity by an applicant may not be considered in the same light as similar “public use” activity by one other than an applicant. See MPEP § 2133.03(a) and § 2133.03(e)(7). Additionally, the concept of “experimental use” may have different significance in “commercial” and “non-commercial” environments. See MPEP § 2133.03(c) and § 2133.03(e) – § 2133.03(e)(6).
It should be noted that pre-AIA 35 U.S.C. 102(b) may create a bar to patentability either alone, if the device in public use or placed on sale anticipates a later claimed invention, or in conjunction with 35 U.S.C. 103, if the claimed invention would have been obvious from the device in conjunction with the prior art. LaBounty Mfg. v. United States Int’l Trade Comm’n, 958 F.2d 1066, 1071, 22 USPQ2d 1025, 1028 (Fed. Cir. 1992).
- (A) “One policy underlying the [on-sale] bar is to obtain widespread disclosure of new inventions to the public via patents as soon as possible.” RCA Corp. v. Data Gen. Corp., 887 F.2d 1056, 1062, 12 USPQ2d 1449, 1454 (Fed. Cir. 1989).
- (B) Another policy underlying the public use and on-sale bars is to prevent the inventor from commercially exploiting the exclusivity of the invention substantially beyond the statutorily authorized period. RCA Corp. v. Data Gen. Corp., 887 F.2d 1056, 1062, 12 USPQ2d 1449, 1454 (Fed. Cir. 1989). See MPEP § 2133.03(e)(1).
- (C) Another underlying policy for the public use and on-sale bars is to discourage “the removal of inventions from the public domain which the public justifiably comes to believe are freely available.” Manville Sales Corp. v. Paramount Sys., Inc., 917 F.2d 544, 549, 16 USPQ2d 1587, 1591 (Fed. Cir. 1990).
It should be noted that pre-AIA 35 U.S.C. 102(b) may create a bar to patentability either alone, if the device in public use or placed on sale anticipates a later claimed invention, or in conjunction with 35 U.S.C. 103, if the claimed invention would have been obvious from the device in conjunction with the prior art. LaBounty Mfg. v. United States Int’l Trade Comm’n, 958 F.2d 1066, 1071, 22 USPQ2d 1025, 1028 (Fed. Cir. 1992).
…
RCA Corp. v. Data Gen. Corp., 887 F.2d 1056, 1062, 12 USPQ2d 1449, 1454 (Fed. Cir. 1989). See MPEP § 2133.03(e)(1).
It should be noted that pre-AIA 35 U.S.C. 102(b) may create a bar to patentability either alone, if the device in public use or placed on sale anticipates a later claimed invention, or in conjunction with 35 U.S.C. 103, if the claimed invention would have been obvious from the device in conjunction with the prior art. LaBounty Mfg. v. United States Int’l Trade Comm’n, 958 F.2d 1066, 1071, 22 USPQ2d 1025, 1028 (Fed. Cir. 1992).
…
Manville Sales Corp. v. Paramount Sys., Inc., 917 F.2d 544, 549, 16 USPQ2d 1587, 1591 (Fed. Cir. 1990).
Determining Whether Application Is AIA or Pre-AIA
[Editor Note: This MPEP section is applicable regardless of whether an application is examined under the AIA or under pre-AIA law. For applications subject to the first inventor to file (FITF) provisions of the AIA, the relevant time is “before the effective filing date of the claimed invention". For applications subject to pre-AIA 35 U.S.C. 102, the relevant time is “at the time of the invention”. 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. Many of the court decisions discussed in this section involved applications or patents subject to pre-AIA 35 U.S.C. 102. These court decisions may be applicable to applications and patents subject to AIA 35 U.S.C. 102 but the relevant time is before the effective filing date of the claimed invention and not at the time of the invention.]
[Editor Note: This MPEP section is applicable regardless of whether an application is examined under the AIA or under pre-AIA law. For applications subject to the first inventor to file (FITF) provisions of the AIA, the relevant time is “before the effective filing date of the claimed invention". For applications subject to pre-AIA 35 U.S.C. 102, the relevant time is “at the time of the invention”. 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. Many of the court decisions discussed in this section involved applications or patents subject to pre-AIA 35 U.S.C. 102. These court decisions may be applicable to applications and patents subject to AIA 35 U.S.C. 102 but the relevant time is before the effective filing date of the claimed invention and not at the time of the invention.]
An applicant may make an admission, or submit evidence of sale of the invention or knowledge of the invention by others, or the examiner may have personal knowledge that the invention was sold by applicant or known by others. If the activity is by an entity other than the inventors, one or more joint inventors, or the assignee, such as sale by another, manufacture by another or disclosure of the invention by the inventor, one or more joint inventors, or the assignee to another then both pre-AIA 35 U.S.C. 102(a) and (b) may be applicable. If the evidence only points to knowledge within the year prior to the effective filing date then pre-AIA 35 U.S.C. 102(a) applies. However, no rejection under pre-AIA 35 U.S.C. 102(a) should be made if there is evidence that inventor made the invention and only disclosed it to others within the year prior to the effective filing date. Pre-AIA 35 U.S.C. 102(b) is applicable if the activity occurred more than 1 year prior to the effective filing date of a claimed invention in the application.
An applicant may make an admission, or submit evidence of sale of the invention or knowledge of the invention by others, or the examiner may have personal knowledge that the invention was sold by applicant or known by others. If the activity is by an entity other than the inventors, one or more joint inventors, or the assignee, such as sale by another, manufacture by another or disclosure of the invention by the inventor, one or more joint inventors, or the assignee to another then both pre-AIA 35 U.S.C. 102(a) and (b) may be applicable. If the evidence only points to knowledge within the year prior to the effective filing date then pre-AIA 35 U.S.C. 102(a) applies. However, no rejection under pre-AIA 35 U.S.C. 102(a) should be made if there is evidence that inventor made the invention and only disclosed it to others within the year prior to the effective filing date. Pre-AIA 35 U.S.C. 102(b) is applicable if the activity occurred more than 1 year prior to the effective filing date of a claimed invention in the application.
Public Use Under AIA (MPEP 2152.02(c))
Pre-AIA 35 U.S.C. 102(b) “contains several distinct bars to patentability, each of which relates to activity or disclosure more than one year prior to the date of the application. Two of these – the ‘public use’ and the ‘on sale’ objections – are sometimes considered together although it is quite clear that either may apply when the other does not.” Dart Indus. v. E.I. du Pont de Nemours & Co., 489 F.2d 1359, 1365, 179 USPQ 392, 396 (7th Cir. 1973). There may be a public use of an invention absent any sales activity. Likewise, there may be a nonpublic, e.g., “secret,” sale or offer to sell an invention which nevertheless constitutes a statutory bar. Hobbs v. United States, 451 F.2d 849, 859-60, 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).
In similar fashion, not all “public use” and “on sale” activities will necessarily occasion the identical result. Although both activities affect how an inventor may use an invention prior to the filing of a patent application, “non-commercial” pre-AIA 35 U.S.C. 102(b) activity may not be viewed the same as similar “commercial” activity. See MPEP § 2133.03(a) and § 2133.03(e)(1). Likewise, “public use” activity by an applicant may not be considered in the same light as similar “public use” activity by one other than an applicant. See MPEP § 2133.03(a) and § 2133.03(e)(7). Additionally, the concept of “experimental use” may have different significance in “commercial” and “non-commercial” environments. See MPEP § 2133.03(c) and § 2133.03(e) – § 2133.03(e)(6).
It should be noted that pre-AIA 35 U.S.C. 102(b) may create a bar to patentability either alone, if the device in public use or placed on sale anticipates a later claimed invention, or in conjunction with 35 U.S.C. 103, if the claimed invention would have been obvious from the device in conjunction with the prior art. LaBounty Mfg. v. United States Int’l Trade Comm’n, 958 F.2d 1066, 1071, 22 USPQ2d 1025, 1028 (Fed. Cir. 1992).
…
(B) Another policy underlying the public use and on-sale bars is to prevent the inventor from commercially exploiting the exclusivity of the invention substantially beyond the statutorily authorized period.
It should be noted that pre-AIA 35 U.S.C. 102(b) may create a bar to patentability either alone, if the device in public use or placed on sale anticipates a later claimed invention, or in conjunction with 35 U.S.C. 103, if the claimed invention would have been obvious from the device in conjunction with the prior art. LaBounty Mfg. v. United States Int’l Trade Comm’n, 958 F.2d 1066, 1071, 22 USPQ2d 1025, 1028 (Fed. Cir. 1992).
…
(C) Another underlying policy for the public use and on-sale bars is to discourage “the removal of inventions from the public domain which the public justifiably comes to believe are freely available.”
Prior Art Under AIA 35 U.S.C. 102 (MPEP 2150-2159)
[Editor Note: This MPEP section is applicable regardless of whether an application is examined under the AIA or under pre-AIA law. For applications subject to the first inventor to file (FITF) provisions of the AIA, the relevant time is “before the effective filing date of the claimed invention". For applications subject to pre-AIA 35 U.S.C. 102, the relevant time is “at the time of the invention”. 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. Many of the court decisions discussed in this section involved applications or patents subject to pre-AIA 35 U.S.C. 102. These court decisions may be applicable to applications and patents subject to AIA 35 U.S.C. 102 but the relevant time is before the effective filing date of the claimed invention and not at the time of the invention.]
In similar fashion, not all “public use” and “on sale” activities will necessarily occasion the identical result. Although both activities affect how an inventor may use an invention prior to the filing of a patent application, “non-commercial” pre-AIA 35 U.S.C. 102(b) activity may not be viewed the same as similar “commercial” activity. See MPEP § 2133.03(a) and § 2133.03(e)(1). Likewise, “public use” activity by an applicant may not be considered in the same light as similar “public use” activity by one other than an applicant. See MPEP § 2133.03(a) and § 2133.03(e)(7). Additionally, the concept of “experimental use” may have different significance in “commercial” and “non-commercial” environments. See MPEP § 2133.03(c) and § 2133.03(e) – § 2133.03(e)(6).
AIA vs Pre-AIA Practice
[Editor Note: This MPEP section is applicable regardless of whether an application is examined under the AIA or under pre-AIA law. For applications subject to the first inventor to file (FITF) provisions of the AIA, the relevant time is “before the effective filing date of the claimed invention". For applications subject to pre-AIA 35 U.S.C. 102, the relevant time is “at the time of the invention”. 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. Many of the court decisions discussed in this section involved applications or patents subject to pre-AIA 35 U.S.C. 102. These court decisions may be applicable to applications and patents subject to AIA 35 U.S.C. 102 but the relevant time is before the effective filing date of the claimed invention and not at the time of the invention.]
No 'By Others' Requirement (MPEP 2152.02(f))
An applicant may make an admission, or submit evidence of sale of the invention or knowledge of the invention by others, or the examiner may have personal knowledge that the invention was sold by applicant or known by others. If the activity is by an entity other than the inventors, one or more joint inventors, or the assignee, such as sale by another, manufacture by another or disclosure of the invention by the inventor, one or more joint inventors, or the assignee to another then both pre-AIA 35 U.S.C. 102(a) and (b) may be applicable. If the evidence only points to knowledge within the year prior to the effective filing date then pre-AIA 35 U.S.C. 102(a) applies. However, no rejection under pre-AIA 35 U.S.C. 102(a) should be made if there is evidence that inventor made the invention and only disclosed it to others within the year prior to the effective filing date. Pre-AIA 35 U.S.C. 102(b) is applicable if the activity occurred more than 1 year prior to the effective filing date of a claimed invention in the application.
Assignee as Applicant Signature
An applicant may make an admission, or submit evidence of sale of the invention or knowledge of the invention by others, or the examiner may have personal knowledge that the invention was sold by applicant or known by others. If the activity is by an entity other than the inventors, one or more joint inventors, or the assignee, such as sale by another, manufacture by another or disclosure of the invention by the inventor, one or more joint inventors, or the assignee to another then both pre-AIA 35 U.S.C. 102(a) and (b) may be applicable. If the evidence only points to knowledge within the year prior to the effective filing date then pre-AIA 35 U.S.C. 102(a) applies. However, no rejection under pre-AIA 35 U.S.C. 102(a) should be made if there is evidence that inventor made the invention and only disclosed it to others within the year prior to the effective filing date. Pre-AIA 35 U.S.C. 102(b) is applicable if the activity occurred more than 1 year prior to the effective filing date of a claimed invention in the application.
Pre-AIA 102(b) – Statutory Bar (MPEP 2133)
Pre-AIA 35 U.S.C. 102(b) “contains several distinct bars to patentability, each of which relates to activity or disclosure more than one year prior to the date of the application. Two of these – the ‘public use’ and the ‘on sale’ objections – are sometimes considered together although it is quite clear that either may apply when the other does not.” Dart Indus. v. E.I. du Pont de Nemours & Co., 489 F.2d 1359, 1365, 179 USPQ 392, 396 (7th Cir. 1973). There may be a public use of an invention absent any sales activity. Likewise, there may be a nonpublic, e.g., “secret,” sale or offer to sell an invention which nevertheless constitutes a statutory bar. Hobbs v. United States, 451 F.2d 849, 859-60, 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).
Commercial Offer for Sale
Pre-AIA 35 U.S.C. 102(b) “contains several distinct bars to patentability, each of which relates to activity or disclosure more than one year prior to the date of the application. Two of these – the ‘public use’ and the ‘on sale’ objections – are sometimes considered together although it is quite clear that either may apply when the other does not.” Dart Indus. v. E.I. du Pont de Nemours & Co., 489 F.2d 1359, 1365, 179 USPQ 392, 396 (7th Cir. 1973). There may be a public use of an invention absent any sales activity. Likewise, there may be a nonpublic, e.g., “secret,” sale or offer to sell an invention which nevertheless constitutes a statutory bar. Hobbs v. United States, 451 F.2d 849, 859-60, 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).
Citations
| Primary topic | Citation |
|---|---|
| AIA vs Pre-AIA Practice Determining Whether Application Is AIA or Pre-AIA On Sale Under AIA (MPEP 2152.02(d)) Prior Art Under AIA 35 U.S.C. 102 (MPEP 2150-2159) | 35 U.S.C. § 102 |
| Assignee as Applicant Signature Determining Whether Application Is AIA or Pre-AIA No 'By Others' Requirement (MPEP 2152.02(f)) | 35 U.S.C. § 102(a) |
| Commercial Offer for Sale On Sale Under AIA (MPEP 2152.02(d)) Pre-AIA 102(b) – Statutory Bar (MPEP 2133) Public Use Under AIA (MPEP 2152.02(c)) | 35 U.S.C. § 102(a)(1) |
| Assignee as Applicant Signature Commercial Offer for Sale Determining Whether Application Is AIA or Pre-AIA No 'By Others' Requirement (MPEP 2152.02(f)) On Sale Under AIA (MPEP 2152.02(d)) Pre-AIA 102(b) – Statutory Bar (MPEP 2133) Prior Art Under AIA 35 U.S.C. 102 (MPEP 2150-2159) Public Use Under AIA (MPEP 2152.02(c)) | 35 U.S.C. § 102(b) |
| On Sale Under AIA (MPEP 2152.02(d)) Public Use Under AIA (MPEP 2152.02(c)) | 35 U.S.C. § 103 |
| On Sale Under AIA (MPEP 2152.02(d)) Prior Art Under AIA 35 U.S.C. 102 (MPEP 2150-2159) Public Use Under AIA (MPEP 2152.02(c)) | 37 CFR § 2133.03(e) |
| On Sale Under AIA (MPEP 2152.02(d)) Prior Art Under AIA 35 U.S.C. 102 (MPEP 2150-2159) Public Use Under AIA (MPEP 2152.02(c)) | 37 CFR § 2133.03(e)(1) |
| On Sale Under AIA (MPEP 2152.02(d)) Prior Art Under AIA 35 U.S.C. 102 (MPEP 2150-2159) Public Use Under AIA (MPEP 2152.02(c)) | 37 CFR § 2133.03(e)(6) |
| On Sale Under AIA (MPEP 2152.02(d)) Prior Art Under AIA 35 U.S.C. 102 (MPEP 2150-2159) Public Use Under AIA (MPEP 2152.02(c)) | 37 CFR § 2133.03(e)(7) |
| On Sale Under AIA (MPEP 2152.02(d)) Prior Art Under AIA 35 U.S.C. 102 (MPEP 2150-2159) Public Use Under AIA (MPEP 2152.02(c)) | MPEP § 2133.03(a) |
| On Sale Under AIA (MPEP 2152.02(d)) Prior Art Under AIA 35 U.S.C. 102 (MPEP 2150-2159) Public Use Under AIA (MPEP 2152.02(c)) | MPEP § 2133.03(c) |
| On Sale Under AIA (MPEP 2152.02(d)) Public Use Under AIA (MPEP 2152.02(c)) | MPEP § 2133.03(e)(1) |
| AIA vs Pre-AIA Practice Determining Whether Application Is AIA or Pre-AIA On Sale Under AIA (MPEP 2152.02(d)) Prior Art Under AIA 35 U.S.C. 102 (MPEP 2150-2159) | MPEP § 2152.02(c) |
| Commercial Offer for Sale On Sale Under AIA (MPEP 2152.02(d)) Pre-AIA 102(b) – Statutory Bar (MPEP 2133) Public Use Under AIA (MPEP 2152.02(c)) | MPEP § 2152.02(d) |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 2133.03 — Rejections Based on “Public Use” or “On Sale”
Source: USPTO2133.03 Rejections Based on “Public Use” or “On Sale” [R-01.2024]
[Editor Note: This MPEP section is applicable regardless of whether an application is examined under the AIA or under pre-AIA law. For applications subject to the first inventor to file (FITF) provisions of the AIA, the relevant time is “before the effective filing date of the claimed invention”. For applications subject to pre-AIA 35 U.S.C. 102, the relevant time is “at the time of the invention”. 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. Many of the court decisions discussed in this section involved applications or patents subject to pre-AIA 35 U.S.C. 102. These court decisions may be applicable to applications and patents subject to AIA 35 U.S.C. 102 but the relevant time is before the effective filing date of the claimed invention and not at the time of the invention.]
An applicant may make an admission, or submit evidence of sale of the invention or knowledge of the invention by others, or the examiner may have personal knowledge that the invention was sold by applicant or known by others. If the activity is by an entity other than the inventors, one or more joint inventors, or the assignee, such as sale by another, manufacture by another or disclosure of the invention by the inventor, one or more joint inventors, or the assignee to another then both pre-AIA 35 U.S.C. 102(a) and (b) may be applicable. If the evidence only points to knowledge within the year prior to the effective filing date then pre-AIA 35 U.S.C. 102(a) applies. However, no rejection under pre-AIA 35 U.S.C. 102(a) should be made if there is evidence that inventor made the invention and only disclosed it to others within the year prior to the effective filing date. Pre-AIA 35 U.S.C. 102(b) is applicable if the activity occurred more than 1 year prior to the effective filing date of a claimed invention in the application.
Pre-AIA 35 U.S.C. 102(b) “contains several distinct bars to patentability, each of which relates to activity or disclosure more than one year prior to the date of the application. Two of these – the ‘public use’ and the ‘on sale’ objections – are sometimes considered together although it is quite clear that either may apply when the other does not.” Dart Indus. v. E.I. du Pont de Nemours & Co., 489 F.2d 1359, 1365, 179 USPQ 392, 396 (7th Cir. 1973). There may be a public use of an invention absent any sales activity. Likewise, there may be a nonpublic, e.g., “secret,” sale or offer to sell an invention which nevertheless constitutes a statutory bar. Hobbs v.United States, 451 F.2d 849, 859-60, 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).
In similar fashion, not all “public use” and “on sale” activities will necessarily occasion the identical result. Although both activities affect how an inventor may use an invention prior to the filing of a patent application, “non-commercial” pre-AIA 35 U.S.C. 102(b) activity may not be viewed the same as similar “commercial” activity. See MPEP § 2133.03(a) and § 2133.03(e)(1). Likewise, “public use” activity by an applicant may not be considered in the same light as similar “public use” activity by one other than an applicant. See MPEP § 2133.03(a) and § 2133.03(e)(7). Additionally, the concept of “experimental use” may have different significance in “commercial” and “non-commercial” environments. See MPEP § 2133.03(c) and § 2133.03(e) – § 2133.03(e)(6).
It should be noted that pre-AIA 35 U.S.C. 102(b) may create a bar to patentability either alone, if the device in public use or placed on sale anticipates a later claimed invention, or in conjunction with 35 U.S.C. 103, if the claimed invention would have been obvious from the device in conjunction with the prior art. LaBounty Mfg.v.United States Int’l Trade Comm’n, 958 F.2d 1066, 1071, 22 USPQ2d 1025, 1028 (Fed. Cir. 1992).
POLICY CONSIDERATIONS- (A) “One policy underlying the [on-sale] bar is to obtain widespread disclosure of new inventions to the public via patents as soon as possible.” RCA Corp. v. Data Gen. Corp., 887 F.2d 1056, 1062, 12 USPQ2d 1449, 1454 (Fed. Cir. 1989).
- (B) Another policy underlying the public use and on-sale bars is to prevent the inventor from commercially exploiting the exclusivity of the invention substantially beyond the statutorily authorized period. RCA Corp.v.Data Gen. Corp., 887 F.2d 1056, 1062, 12 USPQ2d 1449, 1454 (Fed. Cir. 1989). See MPEP § 2133.03(e)(1).
- (C) Another underlying policy for the public use and on-sale bars is to discourage “the removal of inventions from the public domain which the public justifiably comes to believe are freely available.” Manville SalesCorp. v. Paramount Sys., Inc., 917 F.2d 544, 549, 16 USPQ2d 1587, 1591 (Fed. Cir. 1990).