The On-Sale Bar is back baby. | Intellectual property and business law blog

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Steve O'Donnell, Ph.D. Registered Patent Attorney

The On-Sale Bar is back baby.

Back in the olden days, when things were more sepia-colored, there was a rule in patent law that gave inventors one-year after their invention was on sale to get to the patent office. If they didn’t get something filed by then, they were barred from getting a patent.

So, if I invent a widget in March, sell one at a farmer’s market in April, and wait 13 months before filing a patent application, I can’t get a patent because I waited too long. This let people test the market and see if their widget would sell before investing in a patent application, but prevented them from capitalizing on sales and never filing a patent application until they had competitors.

Then, there was the America Invents Act in 2011.

The AIA has some really good stuff, but like anything made by people it has some imperfections. One of these imperfections was in how it defined prior art and disclosures, which now seemed to say that secret sales and uses didn’t start the one-year race to the patent office.

A person shall be entitled to a patent unless …the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.

That or otherwise available to the public is the interesting part. Lawyers will read that as meaning that all the preceding conditions are necessarily also available to the public. So, it follows that if a sale isn’t public, it’s not a “sale” as far as the statute goes, and doesn’t interfere with patentability.

If that’s true, in theory at least, an inventor could sell their invention as long as they want as long at the sale isn’t offered to the public. That could be secretive, dark alley sales, or it could just be products that aren’t offered to the general public.

Crazy right?

Not really, the US Patent and Trademark Office thought that was the case. The manual of patent examination procedure 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), except that the sale must make the invention available to the public.

So, for the last few years some people have been working under the assumption that they could sell their widgets privately, and maybe even sell their stuff in a way that didn’t make the invention “public” like a secret recipe, and still be able to get a patent on their invention if they ever decided to sell publicly or if their trade secret became known.

That’s changing.

Today the Federal Circuit Court clarified in Helsinn Healthcare v. Teva Pharm. that Congress "evidently meant that the public sale itself would put the patented product in the hands of the public," and not that only sales which make all the details of the invention public are “public sales.”

The case was whether a public sale is public, even if the details of the invention aren’t publicly disclosed. So, in other words, selling my famous chili can keep me from patenting the recipe, even if I never tell people my secret ingredient (it’s cinnamon).

The court, as they usually do, didn’t go further than they absolutely needed to and didn’t clarify other outstanding questions about the new on sale bar, but I’m taking this as an indication that we should think of the new on sale bar as the same as the old on sale bar. At least until the courts tell us otherwise.

So, bottom line is that you should get on file before you take the invention out of your garage and someone sees it. That’s not always possible, but try. Problems creep up when you start involving anyone that isn’t you or your co-inventors.