Can a sale by a third party trigger the on-sale bar?
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…
Read MoreWhat constitutes “substantial activity” in the U.S. for the on-sale bar under pre-AIA law?
The concept of “substantial activity” in the U.S. is crucial for determining if foreign sales can trigger the on-sale bar under pre-AIA law. While the MPEP doesn’t provide an exhaustive definition, it offers guidance: “‘On sale’ status can be found if substantial activity prefatory to a ‘sale’ occurs in the United States.” (MPEP 2133.03(d)) This…
Read MoreCan a single sale or offer to sell trigger the on-sale bar?
Yes, even a single sale or offer to sell can trigger the on-sale bar under 35 U.S.C. 102(b). The MPEP explicitly states: Even a single sale or offer to sell the invention may bar patentability under pre-AIA 35 U.S.C. 102(b). (MPEP 2133.03(b)) This principle is supported by case law, including Consolidated Fruit-Jar Co. v. Wright…
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 MoreHow does reduction to practice relate to the on-sale bar in patent law?
Reduction to practice and the on-sale bar are closely related concepts in patent law, particularly in determining the critical date for patentability. The MPEP 2138.05 does not directly address this relationship, but it’s important to understand their interaction: The on-sale bar, codified in 35 U.S.C. 102(a)(1), prevents patenting an invention that was on sale more…
Read MoreWhat 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 MoreWhat types of questions are not considered in ex parte reexamination requests?
Ex parte reexamination requests under 35 U.S.C. 302 are limited to questions of patentability based on prior art patents or printed publications. The MPEP 2216 explicitly states that certain types of questions should not be included in such requests: “Questions relating to grounds of rejection other than those based on prior art patents or printed…
Read MoreDoes a sale need to be public to trigger the on-sale bar?
No, a sale does not need to be public to trigger the on-sale bar under 35 U.S.C. 102(b). The MPEP clarifies this point: Unlike questions of public use, there is no requirement that “on sale” activity be “public.” “Public” as used in pre-AIA 35 U.S.C. 102(b) modifies “use” only. “Public” does not modify “sale.” (MPEP…
Read MoreHow does the Pfaff test apply to the on-sale bar in patent law?
The Pfaff test, established by the Supreme Court in Pfaff v. Wells Electronics, Inc., is crucial for determining whether an invention is “on sale” for purposes of the on-sale bar in patent law. According to MPEP 2152.02(d), the Pfaff test requires that: The product must be the subject of a commercial offer for sale; and…
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