How does AIA 35 U.S.C. 102(a)(1) treat secret commercial use or sale?
Under AIA 35 U.S.C. 102(a)(1), secret commercial use or sale can still qualify as prior art, similar to pre-AIA law. The Supreme Court clarified this in the Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc. case. As stated in the MPEP: “In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 139 S.Ct. 628, 129 USPQ2d…
Read MoreCan secret commercial activity be considered “on sale” under AIA?
Yes, secret commercial activity can be considered “on sale” under AIA 35 U.S.C. 102(a)(1). The MPEP references the Supreme Court decision in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., stating: “[T]he Supreme Court ‘determine[d] that Congress did not alter the meaning of ‘on sale’ when it enacted the AIA, [and held] that an inventor’s…
Read MoreHow does the AIA define “on sale” for prior art purposes?
The AIA maintains the “on sale” provision as a category of prior art under 35 U.S.C. 102(a)(1). According to MPEP 2152.02(d): “The “on sale” provision of AIA 35 U.S.C. 102(a)(1) is triggered by a sale or offer for sale of the claimed invention. The phrase “on sale” in AIA 35 U.S.C. 102(a)(1) is treated as…
Read MoreWhat are the criteria for determining if an invention was “on sale” under pre-AIA law?
Under pre-AIA law, the criteria for determining if an invention was “on sale” were established in the Pfaff v. Wells Electronics, Inc. case. The MPEP summarizes these criteria as follows: “The pre-AIA case law indicates that on sale activity will bar patentability if the claimed invention was: (1) the subject of a commercial sale or…
Read MoreWhat constitutes “on sale” under AIA 35 U.S.C. 102(a)(1)?
Under AIA 35 U.S.C. 102(a)(1), “on sale” is interpreted similarly to its meaning in pre-AIA 35 U.S.C. 102(b). The MPEP states: “The phrase ‘on sale’ in AIA 35 U.S.C. 102(a)(1) is treated as having the same meaning as ‘on sale’ in pre-AIA 35 U.S.C. 102(b).” This means that commercial sales or offers for sale, not…
Read MoreHow does the AIA treat “on sale” activities as prior art?
The AIA’s treatment of “on sale” activities as prior art under 35 U.S.C. 102(a)(1) is similar to pre-AIA law, but with some important changes. The MPEP provides guidance on this topic: “The phrase ‘on sale’ in AIA 35 U.S.C. 102(a)(1) is treated as having the same meaning as ‘on sale’ in pre-AIA 35 U.S.C. 102(b).”…
Read MoreHow are improper grounds for reexamination handled?
Improper grounds for reexamination are those not based on prior art patents or printed publications. The MPEP provides guidance on how to handle such grounds: “If arguments are presented as to grounds not based on prior art patents or printed publications, such as those based on public use or on sale under 35 U.S.C. 102(b),…
Read MoreAre there geographic limitations on “on sale” activities under AIA?
No, there are no geographic limitations on “on sale” activities under AIA 35 U.S.C. 102(a)(1). The MPEP clearly states: “Under AIA 35 U.S.C. 102(a)(1), there is no geographic limitation on where the sale or offer for sale may occur. When formulating a rejection, Office personnel should consider evidence of sales activity, regardless of where the…
Read MoreDoes the enablement inquiry apply to “on sale” determinations under AIA?
No, the enablement inquiry does not apply to “on sale” determinations under AIA 35 U.S.C. 102(a)(1). This interpretation is consistent with pre-AIA law. The MPEP states: “[T]he enablement inquiry is not applicable to the question of whether a claimed invention is ‘on sale’ under pre-AIA 35 U.S.C. 102(b).” Since the AIA’s “on sale” provision is…
Read MoreWhat is the difference between ‘on sale’ and ‘public use’ in patent law?
While both ‘on sale’ and ‘public use’ are forms of prior art in patent law, they have distinct characteristics. According to MPEP 2152.02(d) and related sections: On Sale: Refers to commercial activities involving the invention, such as offers for sale or actual sales. It doesn’t necessarily require the invention to be publicly visible or used.…
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