Does 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 treated as having the same meaning as in pre-AIA law, this principle continues to apply. The focus is on whether a commercial sale or offer for sale occurred and whether the invention was ready for patenting, rather than on whether the sale or offer enabled the invention.
To learn more:
Topics:
MPEP 2100 - Patentability,
MPEP 2152.02(D) - On Sale,
Patent Law,
Patent Procedure