The on-sale bar under the AIA

In Insights, Uncategorized

23 October, 2013

Do non-public sales in Europe destroy novelty in the U.S.?

Among the many news that applicants have had to digest in the America Invents Act, the revised on-sale bar may be one of the more intriguing. Before the law reform, grant of a patent was excluded whenever

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.
(35 U.S.C. section 102(b); emphasis added)

I was then able to reassure my local clients that they could sell products or prototypes embodying a yet unpatented invention as long as the sales were secret and did not involve a U.S. buyer. Indeed the courts had clarified pre-AIA that also private sales, even offers to manufacture a new product, could destroy novelty and invalidate a granted patent.

Under the AIA, the same section reads:

A person shall be entitled to a patent unless (1) the claimed invention was … in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(35 U.S.C. section 102; emphasis added)

Section 103, concerning obviousness, has been amended similarly.

The geographic limitation “in this country” has been deleted. Clearly my clients’ activities within U.S. territory will count the same as outside.

So what about secrecy? An American friend – he’s actually a patent attorney friend – tells me that it’s quite unlikely that non-public sales will qualify. The language “on sale, or otherwise available to the public” is rather clear, suggesting that sales activities are relevant only to the extent they are public. This conclusion was not contradicted by any political statements during the legislation process, and the USPTO appears to embrace it.

However, the legislator deleted “in this country” but did not care to insert, say, “[on] public [sale]”. My friend tells me this fact could support an argument that the legislator did not intend to distinguish secret sales from non-secret sales.

It may take years before an influential U.S. court speaks on this matter. Till that time, we know that it is fairly safe to sell unpatented products under NDA. If you feel your inventions deserve better, remember to file before you sell – at least a simple first version.

Anders Hansson, European Patent Attorney

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