Recent focus on the United States Supreme Court has surrounded who President Trump will nominate to replace retiring Associate Justice Anthony Kennedy. (The nominee is Brett Kavanaugh of the D.C. Circuit.) However, once October is here, the 2018 Term begins and focus will shift back to the cases before the Court. One of those issues will be the extent that sales (or offers for sale) of an invention before the filing of a patent application will prevent the issuance of a patent. Also known as the ‘on-sale bar’ doctrine, the outcome will have broad implications for startup companies and small businesses holding intellectual property assets.
The on-sale bar doctrine originally appeared in the Patent Act of 1952; “[a] person shall be entitled to a patent unless — … the invention was … on sale in this country more than one year prior to the date of the application for patent in the United States…” The Leahy-Smith America Invents Act of 2011 (“AIA”) made the first changes to the on-sale bar in almost 60 years, adding the word “claimed” before “invention” and adding the phrase “or otherwise available to the public”. Post-AIA, “[a] person shall be entitled to a patent unless – the claimed invention was…on sale, or otherwise available to the public before the effective filing date of the claimed invention…” Continue Reading