What constitutes a “public use” under pre-AIA 35 U.S.C. 102(b)?
A “public use” under pre-AIA 35 U.S.C. 102(b) occurs when the invention is in public use before the critical date and is ready for patenting. The Federal Circuit has explained that the proper test for the public use prong includes two key elements: The purported use was accessible to the public; or The invention was…
Read MoreCan a secret use of an invention constitute public use?
Yes, in some circumstances, a secret or confidential use of an invention can constitute public use under pre-AIA 35 U.S.C. 102(b). The MPEP explains: “[S]ecrecy of use alone is not sufficient to show that existing knowledge has not been withdrawn from public use; commercial exploitation is also forbidden.” (MPEP 2133.03(a)) This means that even if…
Read MoreCan secret sales or offers trigger the on-sale bar in patent law?
Yes, secret sales or offers can trigger the on-sale bar in patent law. The MPEP 2152.02(d) states: “The courts have consistently held that an invention may be “on sale” even if the sale or offer is secret.” This means that even if a sale or offer is not publicly known, it can still affect the…
Read MoreWhat constitutes a “public use” under pre-AIA 35 U.S.C. 102(b)?
A “public use” under pre-AIA 35 U.S.C. 102(b) occurs when the invention is both in public use before the critical date and ready for patenting. The Federal Circuit in Invitrogen Corp. v. Biocrest Manufacturing L.P. outlined a two-part test: The purported use was accessible to the public; or The invention was commercially exploited. The court…
Read MoreWhat is the purpose of the on-sale and public use provisions in patent law?
The primary purpose of the on-sale and public use provisions in 35 U.S.C. 102 is to prevent inventors from commercially exploiting their inventions for more than one year before filing a patent application. As stated in the MPEP: “One policy of the on sale and public use provisions of 35 U.S.C. 102 is the prevention…
Read MoreWhat is the “on sale” bar in patent law?
The “on sale” bar in patent law refers to a provision that can prevent an inventor from obtaining a patent if their invention was on sale before the critical date. According to MPEP 2133.03(b): “A sale is a contract between parties to give and to pass rights of property for consideration which the buyer pays…
Read MoreCan a non-profit sale trigger the on-sale bar?
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…
Read MoreCan experimental use negate the on-sale bar?
While experimental use can potentially negate the on-sale bar, it becomes increasingly difficult to prove as commercial exploitation increases. The MPEP states: “As the degree of commercial exploitation in public use or sale activity increases, the burden on an applicant to establish clear and convincing evidence of experimental activity with respect to a public use…
Read MoreWhat types of testing are allowed as experimental use for inventions with no known utility?
For inventions with no known utility, certain types of testing are allowed as experimental use. The MPEP 2133.03(e)(6) provides guidance on this: “[W]here an invention relates to a chemical composition with no known utility, i.e., a patent application for the composition could not be filed (35 U.S.C. 101; 35 U.S.C. 112(a) or pre-AIA 35 U.S.C.…
Read MoreHow does commercial exploitation affect public use determinations?
Commercial exploitation plays a significant role in determining whether an invention has been in public use under pre-AIA 35 U.S.C. 102(b). The MPEP states: “Commercial exploitation is a clear indication of public use, but it likely requires more than, for example, a secret offer for sale.” (MPEP 2133.03(a)) This means that even if an invention…
Read More