Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 2100 – Patentability (6)
Yes, the sale of a product inherently possessing claimed characteristics can trigger the on-sale bar, even if the parties involved in the transaction are unaware of these characteristics. The MPEP clearly states:
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.
(MPEP 2133.03(c))
This principle was established in the case of Abbott Laboratories v. Geneva Pharmaceuticals, Inc., where a patent for a specific crystalline form of a pharmaceutical compound was invalidated due to prior sales, even though the parties involved were unaware of the specific crystalline form at the time of the sales.
To learn more:
Yes, a non-profit sale can trigger the on-sale bar under 35 U.S.C. 102(b). The MPEP clearly states:
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).
(MPEP 2133.03(b))
This interpretation is supported by case law, specifically In re Dybel. The key factor is not whether a profit was realized, but whether the sale was for commercial exploitation of the invention. Even if no profit is made, if the sale was intended to commercially exploit the invention, it can still trigger the on-sale bar.
To learn more:
Yes, a sale by an independent third party can trigger the on-sale bar under 35 U.S.C. 102(b). The MPEP states:
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.
(MPEP 2133.03(b))
However, there is an exception for patented methods that are kept secret and remain secret after a sale of the unpatented product of the method. In such cases, a sale by a third party does not trigger the on-sale bar, but a sale by the patentee or patent applicant would.
This interpretation highlights the importance of maintaining control over the invention and being cautious about disclosing it to third parties before filing a patent application, as even unknowing sales by others could potentially bar patentability.
To learn more:
Courts consider several factors to determine if a claimed invention was offered for sale primarily for experimentation. According to MPEP 2133.03(e)(4), these factors include:
“(1) the necessity for public testing, (2) the amount of control over the experiment retained by the inventor, (3) the nature of the invention, (4) the length of the test period, (5) whether payment was made, (6) whether there was a secrecy obligation, (7) whether records of the experiment were kept, (8) who conducted the experiment, … (9) the degree of commercial exploitation during testing[,] … (10) whether the invention reasonably requires evaluation under actual conditions of use, (11) whether testing was systematically performed, (12) whether the inventor continually monitored the invention during testing, and (13) the nature of contacts made with potential customers.”
It’s important to note that no single factor or combination of factors is necessarily determinative. The examiner must assess the scope and length of the activity in relation to the experimental purpose and the nature of the subject matter involved.
To learn more:
The phrase “in this country” in pre-AIA 35 U.S.C. 102(b) refers specifically to the United States and its territories. According to the MPEP:
“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.”
This definition is important for determining the applicability of the public use and on-sale bars in patent law.
To learn more:
The intent of the inventor is not sufficient alone to determine whether a public use or on-sale bar applies. As stated in MPEP 2133.03(e)(2):
“When sales are made in an ordinary commercial environment and the goods are placed outside the inventor’s control, an inventor’s secretly held subjective intent to ‘experiment,’ even if true, is unavailing without objective evidence to support the contention.”
This means that objective evidence is crucial in determining whether a use or sale was experimental, rather than commercial. The inventor’s secret intent is not enough to overcome a statutory bar.
To learn more:
MPEP 2133.03(B) – "On Sale" (2)
Yes, a non-profit sale can trigger the on-sale bar under 35 U.S.C. 102(b). The MPEP clearly states:
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).
(MPEP 2133.03(b))
This interpretation is supported by case law, specifically In re Dybel. The key factor is not whether a profit was realized, but whether the sale was for commercial exploitation of the invention. Even if no profit is made, if the sale was intended to commercially exploit the invention, it can still trigger the on-sale bar.
To learn more:
Yes, a sale by an independent third party can trigger the on-sale bar under 35 U.S.C. 102(b). The MPEP states:
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.
(MPEP 2133.03(b))
However, there is an exception for patented methods that are kept secret and remain secret after a sale of the unpatented product of the method. In such cases, a sale by a third party does not trigger the on-sale bar, but a sale by the patentee or patent applicant would.
This interpretation highlights the importance of maintaining control over the invention and being cautious about disclosing it to third parties before filing a patent application, as even unknowing sales by others could potentially bar patentability.
To learn more:
MPEP 2133.03(C) – The "Invention" (1)
Yes, the sale of a product inherently possessing claimed characteristics can trigger the on-sale bar, even if the parties involved in the transaction are unaware of these characteristics. The MPEP clearly states:
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.
(MPEP 2133.03(c))
This principle was established in the case of Abbott Laboratories v. Geneva Pharmaceuticals, Inc., where a patent for a specific crystalline form of a pharmaceutical compound was invalidated due to prior sales, even though the parties involved were unaware of the specific crystalline form at the time of the sales.
To learn more:
MPEP 2133.03(D) – "In This Country" (1)
The phrase “in this country” in pre-AIA 35 U.S.C. 102(b) refers specifically to the United States and its territories. According to the MPEP:
“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.”
This definition is important for determining the applicability of the public use and on-sale bars in patent law.
To learn more:
MPEP 2133.03(E)(2) – Intent (1)
The intent of the inventor is not sufficient alone to determine whether a public use or on-sale bar applies. As stated in MPEP 2133.03(e)(2):
“When sales are made in an ordinary commercial environment and the goods are placed outside the inventor’s control, an inventor’s secretly held subjective intent to ‘experiment,’ even if true, is unavailing without objective evidence to support the contention.”
This means that objective evidence is crucial in determining whether a use or sale was experimental, rather than commercial. The inventor’s secret intent is not enough to overcome a statutory bar.
To learn more:
MPEP 2133.03(E)(4) – Factors Indicative Of An Experimental Purpose (1)
Courts consider several factors to determine if a claimed invention was offered for sale primarily for experimentation. According to MPEP 2133.03(e)(4), these factors include:
“(1) the necessity for public testing, (2) the amount of control over the experiment retained by the inventor, (3) the nature of the invention, (4) the length of the test period, (5) whether payment was made, (6) whether there was a secrecy obligation, (7) whether records of the experiment were kept, (8) who conducted the experiment, … (9) the degree of commercial exploitation during testing[,] … (10) whether the invention reasonably requires evaluation under actual conditions of use, (11) whether testing was systematically performed, (12) whether the inventor continually monitored the invention during testing, and (13) the nature of contacts made with potential customers.”
It’s important to note that no single factor or combination of factors is necessarily determinative. The examiner must assess the scope and length of the activity in relation to the experimental purpose and the nature of the subject matter involved.
To learn more:
Patent Law (6)
Yes, the sale of a product inherently possessing claimed characteristics can trigger the on-sale bar, even if the parties involved in the transaction are unaware of these characteristics. The MPEP clearly states:
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.
(MPEP 2133.03(c))
This principle was established in the case of Abbott Laboratories v. Geneva Pharmaceuticals, Inc., where a patent for a specific crystalline form of a pharmaceutical compound was invalidated due to prior sales, even though the parties involved were unaware of the specific crystalline form at the time of the sales.
To learn more:
Yes, a non-profit sale can trigger the on-sale bar under 35 U.S.C. 102(b). The MPEP clearly states:
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).
(MPEP 2133.03(b))
This interpretation is supported by case law, specifically In re Dybel. The key factor is not whether a profit was realized, but whether the sale was for commercial exploitation of the invention. Even if no profit is made, if the sale was intended to commercially exploit the invention, it can still trigger the on-sale bar.
To learn more:
Yes, a sale by an independent third party can trigger the on-sale bar under 35 U.S.C. 102(b). The MPEP states:
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.
(MPEP 2133.03(b))
However, there is an exception for patented methods that are kept secret and remain secret after a sale of the unpatented product of the method. In such cases, a sale by a third party does not trigger the on-sale bar, but a sale by the patentee or patent applicant would.
This interpretation highlights the importance of maintaining control over the invention and being cautious about disclosing it to third parties before filing a patent application, as even unknowing sales by others could potentially bar patentability.
To learn more:
Courts consider several factors to determine if a claimed invention was offered for sale primarily for experimentation. According to MPEP 2133.03(e)(4), these factors include:
“(1) the necessity for public testing, (2) the amount of control over the experiment retained by the inventor, (3) the nature of the invention, (4) the length of the test period, (5) whether payment was made, (6) whether there was a secrecy obligation, (7) whether records of the experiment were kept, (8) who conducted the experiment, … (9) the degree of commercial exploitation during testing[,] … (10) whether the invention reasonably requires evaluation under actual conditions of use, (11) whether testing was systematically performed, (12) whether the inventor continually monitored the invention during testing, and (13) the nature of contacts made with potential customers.”
It’s important to note that no single factor or combination of factors is necessarily determinative. The examiner must assess the scope and length of the activity in relation to the experimental purpose and the nature of the subject matter involved.
To learn more:
The phrase “in this country” in pre-AIA 35 U.S.C. 102(b) refers specifically to the United States and its territories. According to the MPEP:
“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.”
This definition is important for determining the applicability of the public use and on-sale bars in patent law.
To learn more:
The intent of the inventor is not sufficient alone to determine whether a public use or on-sale bar applies. As stated in MPEP 2133.03(e)(2):
“When sales are made in an ordinary commercial environment and the goods are placed outside the inventor’s control, an inventor’s secretly held subjective intent to ‘experiment,’ even if true, is unavailing without objective evidence to support the contention.”
This means that objective evidence is crucial in determining whether a use or sale was experimental, rather than commercial. The inventor’s secret intent is not enough to overcome a statutory bar.
To learn more:
Patent Procedure (6)
Yes, the sale of a product inherently possessing claimed characteristics can trigger the on-sale bar, even if the parties involved in the transaction are unaware of these characteristics. The MPEP clearly states:
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.
(MPEP 2133.03(c))
This principle was established in the case of Abbott Laboratories v. Geneva Pharmaceuticals, Inc., where a patent for a specific crystalline form of a pharmaceutical compound was invalidated due to prior sales, even though the parties involved were unaware of the specific crystalline form at the time of the sales.
To learn more:
Yes, a non-profit sale can trigger the on-sale bar under 35 U.S.C. 102(b). The MPEP clearly states:
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).
(MPEP 2133.03(b))
This interpretation is supported by case law, specifically In re Dybel. The key factor is not whether a profit was realized, but whether the sale was for commercial exploitation of the invention. Even if no profit is made, if the sale was intended to commercially exploit the invention, it can still trigger the on-sale bar.
To learn more:
Yes, a sale by an independent third party can trigger the on-sale bar under 35 U.S.C. 102(b). The MPEP states:
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.
(MPEP 2133.03(b))
However, there is an exception for patented methods that are kept secret and remain secret after a sale of the unpatented product of the method. In such cases, a sale by a third party does not trigger the on-sale bar, but a sale by the patentee or patent applicant would.
This interpretation highlights the importance of maintaining control over the invention and being cautious about disclosing it to third parties before filing a patent application, as even unknowing sales by others could potentially bar patentability.
To learn more:
Courts consider several factors to determine if a claimed invention was offered for sale primarily for experimentation. According to MPEP 2133.03(e)(4), these factors include:
“(1) the necessity for public testing, (2) the amount of control over the experiment retained by the inventor, (3) the nature of the invention, (4) the length of the test period, (5) whether payment was made, (6) whether there was a secrecy obligation, (7) whether records of the experiment were kept, (8) who conducted the experiment, … (9) the degree of commercial exploitation during testing[,] … (10) whether the invention reasonably requires evaluation under actual conditions of use, (11) whether testing was systematically performed, (12) whether the inventor continually monitored the invention during testing, and (13) the nature of contacts made with potential customers.”
It’s important to note that no single factor or combination of factors is necessarily determinative. The examiner must assess the scope and length of the activity in relation to the experimental purpose and the nature of the subject matter involved.
To learn more:
The phrase “in this country” in pre-AIA 35 U.S.C. 102(b) refers specifically to the United States and its territories. According to the MPEP:
“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.”
This definition is important for determining the applicability of the public use and on-sale bars in patent law.
To learn more:
The intent of the inventor is not sufficient alone to determine whether a public use or on-sale bar applies. As stated in MPEP 2133.03(e)(2):
“When sales are made in an ordinary commercial environment and the goods are placed outside the inventor’s control, an inventor’s secretly held subjective intent to ‘experiment,’ even if true, is unavailing without objective evidence to support the contention.”
This means that objective evidence is crucial in determining whether a use or sale was experimental, rather than commercial. The inventor’s secret intent is not enough to overcome a statutory bar.
To learn more: