What 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 suggests that activities leading up to a sale, even if the final transaction occurs abroad, can be considered. Examples of substantial activities might include:
- Negotiations conducted in the U.S.
- Signing of contracts or agreements in the U.S.
- Significant product development or testing in the U.S.
- Marketing or promotional activities targeting U.S. customers
The MPEP cites the case of Robbins Co. v. Lawrence Mfg. Co., 482 F.2d 426, 433, 178 USPQ 577, 583 (9th Cir. 1973), which established this principle. Each case would be evaluated based on its specific facts to determine if the U.S. activities were substantial enough to trigger the on-sale bar.
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