The “Invention”

[Editor Note: This MPEP section

may be applicable

to

applications subject to examination under the first inventor to file (FITF)

provisions of the AIA as set forth in

35 U.S.C. 100 (note)

. See

MPEP § 2159

et seq. to determine whether an application

is subject to examination under the FITF provisions, and

MPEP §

2150

et seq. for examination of applications subject to

those provisions. See

MPEP § 2152.02(c) through (e)

for

a detailed discussion of the public use and on sale provisions of

AIA

35 U.S.C. 102

.]

Pre-AIA 35 U.S.C. 102

Conditions for patentability; novelty and loss of right to

patent.

A person shall be entitled to a patent unless -

*****

(b)

the invention

was…in public use or on sale in this

country, more than one year prior to the date of the application for patent

in the United States

*****

(Emphasis added).

I.

THE INVENTION MUST BE “READY FOR PATENTING”

In

Pfaff v. Wells Elecs., Inc.,

525 U.S. 55,

66-68, 48 USPQ2d 1641, 1647 (1998), the Supreme Court enunciated a two-prong test

for determining whether an invention was “on sale” within the meaning of

pre-AIA 35

U.S.C. 102(b)

even if it had not yet been reduced to

practice. “[T]he on-sale bar applies when two conditions are satisfied before the

critical date [more than one year before the effective filing date of the claimed

invention]. First, the product must be the subject of a commercial offer for

sale…. Second, the invention must be ready for patenting.”

Id.

at 67, 119 S.Ct. at 311-12, 48 USPQ2d at 1646-47.

The Federal Circuit explained that the Supreme Court’s “ready for

patenting” prong applies in the context of both the on sale and public use bars.

Invitrogen Corp. v. Biocrest Manufacturing L.P.,

424 F.3d

1374, 1379, 76 USPQ2d 1741, 1744 (Fed. Cir. 2005) (“A bar under

[pre-AIA] section

102(b)

arises where, before the critical date, the invention

is in public use and ready for patenting.”)

1646-47.

The Federal Circuit explained that the Supreme Court’s “ready for

patenting” prong applies in the context of both the on sale and public use bars.

Invitrogen Corp. v. Biocrest Manufacturing L.P.,

424 F.3d

1374, 1379, 76 USPQ2d 1741, 1744 (Fed. Cir. 2005) (“A bar under

[pre-AIA] section

102(b)

arises where, before the critical date, the invention

is in public use and ready for patenting.”). “Ready for patenting,” the second

prong of the

Pfaff

test, “may be satisfied in at least two

ways: by proof of reduction to practice before the critical date; or by proof that

prior to the critical date the inventor had prepared drawings or other

descriptions of the invention that were sufficiently specific to enable a person

skilled in the art to practice the invention.”

Id.

at 67, 199

S.Ct. at 311-12, 48 USPQ2d at 1647 (The patent was held invalid because the

invention for a computer chip socket was “ready for patenting” when it was offered

for sale more than one year prior to the application filing date. Even though the

invention had not yet been reduced to practice, the manufacturer was able to

produce the claimed computer chip sockets using the inventor’s detailed drawings

and specifications, and those sockets contained all elements of invention claimed

in the patent.). See also

Weatherchem Corp. v. J.L. Clark Inc.,

163 F.3d 1326, 1333, 49 USPQ2d 1001, 1006-07 (Fed. Cir. 1998) (The invention was

held “ready for patenting” since the detailed drawings of plastic dispensing caps

offered for sale “contained each limitation of the claims and were sufficiently

specific to enable person skilled in art to practice the invention”.).

If the invention had been actually reduced to practice before

being sold or offered for sale more than 1 year before filing of the application,

a patent will be barred.

Vanmoor v. Wal-Mart Stores, Inc.,

201

F.3d 1363, 1366-67, 53 USPQ2d 1377, 1379 (Fed. Cir

for sale “contained each limitation of the claims and were sufficiently

specific to enable person skilled in art to practice the invention”.).

If the invention had been actually reduced to practice before

being sold or offered for sale more than 1 year before filing of the application,

a patent will be barred.

Vanmoor v. Wal-Mart Stores, Inc.,

201

F.3d 1363, 1366-67, 53 USPQ2d 1377, 1379 (Fed. Cir. 2000) (“Here the pre-critical

date sales were of completed cartridges made to specifications that remained

unchanged to the present day, showing that any invention embodied in the accused

cartridges was reduced to practice before the critical date. The

Pfaff

ready for patenting condition is also satisfied

because the specification drawings, available prior to the critical date, were

actually used to produce the accused cartridges.”);

In re

Hamilton,

882 F.2d 1576, 1580, 11 USPQ2d 1890, 1893 (Fed. Cir. 1989).

"If a product that is offered for sale

inherently possesses each of the limitations of the claims, then the invention

is on sale, whether or not the parties to the transaction recognize that the

product possesses the claimed characteristics."

Abbott Laboratories v. Geneva Pharmaceuticals, Inc.,

182 F.3d

1315, 1319, 51 USPQ2d 1307, 1310 (Fed. Cir. 1999) (Claim for a particular

anhydrous crystalline form of a pharmaceutical compound was held invalid under the

on-sale bar of

pre-AIA 35 U.S.C. 102(b)

, even though the parties to the

U.S. sales of the foreign manufactured compound did not know the identity of the

particular crystalline form.);

STX LLC. v. Brine Inc.,

211 F.3d

588, 591, 54 USPQ2d 1347, 1350 (Fed. Cir. 2000) (Claim for a lacrosse stick was

held invalid under the on-sale bar despite the argument that it was not known at

the time of sale whether the sticks possessed the recited “improved playing and

handling characteristics.” “Subjective qualities inherent in a product, such as

‘improved playing and handling’, cannot serve as an escape hatch to circumvent an

on-sale bar.”)

2d 1347, 1350 (Fed. Cir. 2000) (Claim for a lacrosse stick was

held invalid under the on-sale bar despite the argument that it was not known at

the time of sale whether the sticks possessed the recited “improved playing and

handling characteristics.” “Subjective qualities inherent in a product, such as

‘improved playing and handling’, cannot serve as an escape hatch to circumvent an

on-sale bar.”). 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 of an invention for its intended purpose beyond

the probability of failure, unless by virtue of the very simplicity of an

invention its practical operativeness is clear.

Field v.

Knowles,

183 F.2d 593, 601, 86 USPQ 373, 379 (CCPA 1950);

Steinberg v. Seitz,

517 F.2d 1359, 1363, 186 USPQ 209, 212

(CCPA 1975).

The invention need not be ready for satisfactory commercial

marketing for sale to bar a patent.

Atlantic Thermoplastics Co. v. Faytex

Corp.,

970 F.2d 834, 836-37, 23 USPQ2d 1481, 1483 (Fed. Cir. 1992).

II.

INVENTOR HAS SUBMITTED A 37 CFR 1.131 AFFIDAVIT OR DECLARATION

Affidavits or declarations submitted under

37 CFR

1.131

to swear behind a reference may constitute, among

other things, an admission that an invention was “complete” more than 1 year

before the filing of an application. See

In re Foster,

343 F.2d

980, 987-88, 145 USPQ 166, 173 (CCPA 1965);

Dart Indus. v. E.I. duPont de

Nemours & Co.,

489 F.2d 1359, 1365, 179 USPQ 392, 396 (7th Cir.

1973). Also see

MPEP

§ 715.10

.

III.

SALE OF A PROCESS

A claimed process, which is a series of acts or steps, is not

sold in the same sense as is a claimed product, device, or apparatus, which is a

tangible item. “‘Know-how’ describing what the process consists of and how the

process should be carried out may be sold in the sense that the buyer acquires

knowledge of the process and obtains the freedom to carry it out pursuant to the

terms of the transaction

med process, which is a series of acts or steps, is not

sold in the same sense as is a claimed product, device, or apparatus, which is a

tangible item. “‘Know-how’ describing what the process consists of and how the

process should be carried out may be sold in the sense that the buyer acquires

knowledge of the process and obtains the freedom to carry it out pursuant to the

terms of the transaction. However, such a transaction is not a ‘sale’ of the

invention within the meaning of

[pre-AIA] §102(b)

because the

process has not been carried out or performed as a result of the transaction.”

In re Kollar,

286 F.3d 1326, 1332, 62 USPQ2d 1425, 1429

(Fed. Cir. 2002). However, sale of a product made by the claimed process by the

patentee or a licensee would constitute a sale of the process within the meaning

of

pre-AIA 35

U.S.C. 102(b)

. See

id.

at 1333, 62 USPQ2d

at 1429;

D.L. Auld Co. v. Chroma Graphics Corp.,

714 F.2d 1144,

1147-48, 219 USPQ 13, 15-16 (Fed. Cir. 1983) (Even though the sale of a product

made by a claimed method before the critical date did not reveal anything about

the method to the public, the sale resulted in a “forfeiture” of any right to a

patent to that method);

W.L. Gore & Assocs., Inc. v. Garlock,

Inc.,

721 F.2d 1540, 1550, 220 USPQ 303, 310 (Fed. Cir. 1983). The

application of

pre-AIA 35 U.S.C. 102(b)

would also be triggered by

actually performing the claimed process itself for consideration. See

Scaltech, Inc. v. Retec/Tetra, L.L.C.,

269 F.3d 1321, 1328,

60 USPQ2d 1687, 1691(Fed. Cir. 2001) (Patent was held invalid under

pre-AIA 35

U.S.C. 102(b)

based on patentee’s offer to perform the

claimed process for treating oil refinery waste more than one year before filing

the patent application). Moreover, the sale of a device embodying a claimed

process may trigger the on-sale bar.

Minton v. National Ass’n. of

Securities Dealers, Inc.,

336 F.3d 1373, 1378, 67 USPQ2d 1614, 1618

(Fed. Cir

1) (Patent was held invalid under

pre-AIA 35

U.S.C. 102(b)

based on patentee’s offer to perform the

claimed process for treating oil refinery waste more than one year before filing

the patent application). Moreover, the sale of a device embodying a claimed

process may trigger the on-sale bar.

Minton v. National Ass’n. of

Securities Dealers, Inc.,

336 F.3d 1373, 1378, 67 USPQ2d 1614, 1618

(Fed. Cir. 2003) (finding a fully operational computer program implementing and

thus embodying the claimed method to trigger the on-sale bar). However, the sale

of a prior art device different from that disclosed in a patent that is asserted

after the critical date to be capable of performing the claimed method is not an

on-sale bar of the process.

Poly-America LP v. GSE Lining Tech.

Inc.,

383 F.3d 1303, 1308-09, 72 USPQ2d 1685, 1688-89 (Fed. Cir.

2004) (stating that the transaction involving the sale of the prior art device did

not involve a transaction of the claimed method but instead only a device

different from that described in the patent for carrying out the claimed method,

where the device was not used to practice the claimed method until well after the

critical date, and where there was evidence that it was not even known whether the

device could perform the claimed process).