Recently, the U.S. Court of Appeals for the Federal Circuit (CAFC) further explained the “on-sale” bar in Junker v. Medical Components, Inc., Case No. 2021-1649 (Feb. 10, 2022). As previously reported here, the case hinged on whether a letter between Larry Junker’s business partner and Boston Scientific Corporation (BSC) was a “commercial offer for sale” before the one-year grace period took effect. The CAFC held that all necessary terms for a commercial offer were present in the letter, and therefore, the letter qualified as a commercial offer for sale invalidating Junker’s patent.
On-Sale Bar
According to the patent statute, “a person shall be entitled to a patent unless…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….” (Pre-America Invents Act (AIA) 35 U.S.C. § 102(b). Although the case was examined under pre-AIA 35 U.S.C. § 102, the analysis is analogous to post-AIA 35 U.S.C. § 102 following the Supreme Court’s ruling that the AIA’s on-sale bar analysis remains unchanged from pre-AIA (aside from AIA § 102 not requiring that the sale happen “in this country”). Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc. 139 S. Ct. 628 (2019). Additionally, even though this case involved a design patent, the on-sale bar of § 102 applies evenly to design, plant, and utility patents and applications.
To trigger the on-sale bar, the invention must:
(1) be the subject of a commercial offer for sale, and
(2) the invention must be ready for patenting.
Excerpted from IP Watchdog. Read more here.