THE ON-SALE BAR AFTER PFAFF

August 28, 2003

I.  Introduction

The Institute for Intellectual Property and Information Law at the University of Houston Law Center publishes “www.patstats.org,” providing United States patent litigation statistics.  Specifically, with respect to the issue of validity, in 2000, the alleged infringer “won” the issue 53% of the time and the patent was held invalid, while the patentee “won” the issue only 47% of the time, and the patent was held valid.  In 2001, the patentees faired much better, with the alleged infringer “winning” the issue 28% of the time, and the patentee “winning” the issue 72% of the time.

A finding of invalidity is a win for an alleged infringer and a loss for the patentee.  The means of reaching an invalid verdict are therefore of great concern to patent practitioners and inventors.  This paper explores the On-Sale Bar found in 35 USC §102(b) and its application to a finding of patent invalidity during litigation.  A finding of invalidity under §102(b) often can be avoided through careful planning during the prosecution of the patent.  An examination of the case law on this issue gives rise to practice tips that can be employed by the patent practitioner during prosecution to later avoid a finding of invalidity during litigation.

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