What constitutes a reduction to practice in the context of the on-sale bar?
In the context of the on-sale bar, reduction to practice typically requires demonstrating the practical utility of an invention under actual working conditions. The MPEP states: 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 demonstrate the practical utility…
Read MoreWhat is the “ready for patenting” test in the context of the on-sale bar?
The “ready for patenting” test is part of a two-prong test established by the Supreme Court in Pfaff v. Wells Elecs., Inc. for determining whether an invention was “on sale” under pre-AIA 35 U.S.C. 102(b). The test states that an invention is “ready for patenting” if either: It has been reduced to practice before the…
Read MoreCan the sale of a product inherently possessing claimed characteristics trigger the on-sale bar?
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,…
Read MoreHow does the on-sale bar apply to inventions that have not been reduced to practice?
The on-sale bar can apply to inventions that have not been reduced to practice if they meet the criteria established in the Pfaff test. Specifically: The product must be the subject of a commercial offer for sale. The invention must be ready for patenting. An invention can be “ready for patenting” even without reduction to…
Read MoreHow does the on-sale bar apply to claimed processes?
The application of the on-sale bar to claimed processes differs from its application to products or devices. The MPEP explains: A claimed process, which is a series of acts or steps, is not sold in the same sense as is a claimed product, device, or apparatus, which is a tangible item. (MPEP 2133.03(c)) However, the…
Read MoreHow can a 37 CFR 1.131 affidavit affect the on-sale bar determination?
A 37 CFR 1.131 affidavit, commonly used to swear behind a reference, can inadvertently affect the on-sale bar determination. The MPEP warns: Affidavits or declarations submitted under 37 CFR 1.131 to swear behind a reference may constitute, among other things, an admission that an invention was “complete” more than 1 year before the filing of…
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