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Patents Q&A

What is a “Printed Publication” for Patentability?

Novelty and non-obviousness requirements for patentability are assessed based on the contents of the “prior art”, which can include information previously published by anyone—even by an inventor. Section 102 of the patent laws formally defines what qualifies as prior art in the USA. An earlier “printed publication” will usually count as prior art for novelty (anticipation) and obviousness assessments against a later patent application. Though there are some exceptions, including a one-year grace period that may exclude prior disclosures by an inventor.

The question at hand is about the legal requirements for something to qualify as a “printed publication” for patentability in the U.S. (since the adoption of the America Invents Act [AIA]) This mostly depends on whether relevant technical disclosures appeared in something was generally publicly accessible long enough ago. For the discussion that follows, we will simply assume that given materials contain some kind of relevant technical disclosure.

Examples of Printed Publications

Printed publications can be all sorts of things. They can include books, technical journal articles, web pages, videos, audio recordings, etc. This type of prior art is not limited to the particular format of the materials. In the Internet age, printed publications encompass more than just written text, and more than just hard copy materials.

But “printed publications” generally exclude products themselves. That is, a commercial product or the public use of a method/process would not normally be considered a “printed publication”, although they might instead fall within on-sale and/or public use prior art categories. Yet associated product manuals, product advertisements, and the like might qualify as printed publications.

“Printed Publications” Versus a “Patent” or “Application for Patent Published or Deemed Published”

Before going any further, it is important to note that U.S. law calls out patents and published patent applications separately from “printed publications”. (35 U.S.C. § 102(a)). But patents and published patent applications can be considered “printed publications” too. Patent-related publications can potentially qualify as prior art as any (or all) of a “printed publication”, something “patented,” and/or as a “a patent issued under section 151, or in an application for patent published or deemed published under section 122(b).” In other words, those categories are not mutually exclusive.

The important point here, which may be counter-intuitive, is that “printed publications” include but also go beyond patent-related publications. For that reason, the term “non-patent literature” (NPL) is sometimes used to describe a typical kind of non-patent prior art that falls under the category of printed publications. That terminology sometimes helps to highlight unique issues that can arise when seeking to establish that an NPL reference qualifies as prior art.

Public Accessibility

The first question in determining if something qualifies as a printed publication is determining whether it was published. Courts have said that “public accessibility” is the touchstone in determining whether a reference constitutes a “printed publication”. A given reference will be considered publicly accessible only if it was made available to the extent that persons interested and ordinarily skilled in the relevant subject matter (or art) exercising reasonable diligence can locate it. There is no formula or checklist for making that determination. Whether a reference is publicly accessible is determined on a case-by-case basis based on all the facts and circumstances surrounding disclosure of the reference to members of the public.

There are really three ways something can be established as publicly accessible in the eyes of U.S. courts:

  • Cataloging/indexing – By establishing that a document was catalogued or indexed in a publicly accessible archive (e.g., a library catalog or Internet search engine) so that persons interested and ordinarily skilled in the subject matter or art can locate it by exercising reasonable diligence and using available research tools, regardless of whether anyone actually accessed it;
  • Distribution/dissemination – By establishing that a document was distributed or disseminated (e.g., mailed, handed out in person, sent in a newsgroup electronic message, or announced orally at a conference and made available) in a sufficiently broad way, without a reasonable expectation of privacy, so that members of the public interested in and ordinarily skilled in the subject matter or art could obtain copies by exercising reasonable diligence; or
  • Public display (without literal distribution) – By establishing that materials (e.g., a temporarily displayed slide presentation, video shown on-site, poster, billboard, etc.) were publicly displayed for a sufficient time and in a sufficiently broad manner, without a reasonable expectation of privacy, so as to be sufficiently accessible to persons interested and ordinarily skilled in the subject matter or art by exercising reasonable diligence, even though copies of the materials were never distributed or indexed and the materials never physically left the presenter’s control.

Notably, courts have said that a sufficient public dissemination or display of materials can make them a “printed publication” even where those materials were never searchable and never indexed/cataloged. Cataloging or indexing something is just one among many ways that something can be considered published and publicly available.

Private communications do not count as printed publications, whether designed for the use of single persons or of a few restricted groups of persons. Anything that is reasonably expected to remain secret, such as private communications marked as confidential or not for distribution or exchanged under a non-disclosure agreement (NDA), will not qualify as printed publication prior art. When dissemination or display is asserted as the basis for public accessibility, it is necessary to look at certain factors to determine the reference was sufficiently publicly accessible to count as a “printed publication”. For instance, establishing public display requires looking at where and how the display occurred, including the openness, size, and nature of the display venue.

Also, technical accessibility alone is not enough if no one of ordinary skill in the art could have reasonably found the materials except by accident. The materials have to sufficiently publicly accessible to be considered “published”, by doing something that reasonably alerts the relevant public to their existence. Materials that are in a library or on web server, or randomly left lying in a public place, but that have not been indexed, disseminated to, or otherwise affirmatively announced to the interested public will not be considered generally publicly accessible, for example.

It may be helpful to consider a push vs. pull distinction regarding the public accessibility threshold. Publication in effect requires that materials be pushed out in some manner that allows the interested public to know about them. Such a “push” could be any of the three options described above: cataloging/indexing, public dissemination, or public display. An interesting facet of this is that anyone can publish a “printed publication.” There is no hierarchy of worthy/unworthy publications. Publication is not limited to certain channels (controlled by gatekeepers). But the mere fact that someone could “pull” information by specifically requesting it is not enough. It begs the question to say that information could be requested if there was no reason for someone to know in the first place that it could (technically) be requested. In short, printed publication status for patentability requires some kind of “push” out of the realm of private knowledge and into the realm of public accessibility.

Date of Public Availability

In order to qualify as prior art against a given claim, a printed publication must also be old enough. The essence of something being “prior art” is that it pre-dated a later effort to patent an invention. This requires looking whether a given publication was publicly accessible (published) before a critical date. The term “critical date” is often used in order to implicitly acknowledge that the date that divides prior art from things that are not old enough to be prior art varies depending on whether or not an exception applies—possible exceptions are discussed below. For a typical “printed publication” by a third party, where no exception applies, the critical date means before the effective filing date of the patent claim at issue.

The date of public availability is sometimes easily determined, but not always. This question is easiest when the materials in question are the kind subject to a predictable and reliable means of publication. For instance, using a U.S. patent application publication as a “printed publication” is straightforward because the patents are official U.S. government documents that are publicly available from the time they are issues and the issue dates printed on the face of patents are reliable indicators of the actual date of issuance (publication). This question is also fairly easy for foreign patent documents.

When in comes to many types of materials, however, dates may not appear on the materials themselves or those dates might not be sufficiently reliable. To use a famous example, Sigmund Freud’s book Die Traumdeutung [The Interpretation of Dreams] was first published in November of 1899 but the title page was post-dated to 1900. Also, dates appearing on a document may indicate something other than a date of general public accessibility. For example, the mere presence of a copyright notice date, printing date, Internet server upload date, or the like on reference itself will not necessarily satisfy public availability evidentiary requirements. But publication by an “established” publisher on something bearing traditional hallmarks of publication (a book’s ISBN, etc.) may be sufficient in AIA trials before the USPTO’s Patent Trial & appeal Board (PTAB).

There can also be disputes about revisions or different versions of a given publication. This is especially true for online materials. Sometimes a publication date may reflect only the initial publication date. But it may not account for the dates that revisions, modifications, or later additions took place. The date of public accessibility is assessed on the basis of the particular version put forward as potential prior art, and cannot be assumed to match that of a substantively different version.

Legal Standards for Evidence of Publication

To complicate matters, use of “printed publication” evidence in formal patent examination or disputes requires satisfying rules around the use and introduction of evidence. Different evidentiary standards will apply depending on where and how patentability or validity is being assessed.

During regular examination of a new patent application at the USPTO, a relatively low evidentiary standard is applied. A date appearing on a document can establish its publication for examination purposes unless the applicant challenges it. (MPEP § 2128).

However, higher standards are applied in contentious proceedings, including IPR proceedings and during infringement suits in courts. In those situations, there are rules against hearsay (Fed. R. Evid. 802 and 803) and rules requiring authentication of evidence (Fed. R. Evid. 901 and 902). These requirements may necessitate use of a witness to authenticate something put forward as a “printed publication” and its alleged publication date. This can include testimony from a librarian who cataloged something as of a particular date or a computer forensic expert able to retroactively determine the date of publication.

Web pages are a common type of printed publication evidence for which the publication date normally needs to be established beyond just a date that appears on the web page itself. Aside from witness testimony, demonstrating a clear reliable process for capturing, preserving, and presenting the web page, such as using the Internet Archive’s “Wayback Machine,” might be acceptable. (See https://archive.org/legal/faq.php).

Complicating matters still further is that a preponderance of the evidence standard is applied in all USPTO matters while a higher clear & convincing evidence standard is applied in courts. So the PTAB may accept something as a printed publication while a district court might not, based on these different evidentiary burdens (under essentially the same evidentiary rules).

Potential Exceptions

A printed publication will not count as prior art if (a) it was by an inventor within a one-year grace period before the patent application’s effective filing date or (b) the publication is by another but an inventor had previously publicly disclosed the invention (within the grace period).

“(a) Novelty; Prior Art.-A person shall be entitled to a patent unless-

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or

(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

(b) Exceptions.

(1) Disclosures made 1 year or less before the effective filing date of the claimed invention.-A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if

(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

(2) Disclosures appearing in applications and patents.-A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if-

(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;

(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. [see also § 102(c) regarding inventions under joint research agreements that may satisfy this provision]

35 U.S.C. § 102(a) and (b) (emphasis added)

This rather long list of possible exceptions is no doubt confusing. But some general points may aid in understanding the exceptions.

First, the exceptions under § 102(b) fall into two categories depending on whether the alleged prior art is put forward under § 102(a)(1) or under § 102(a)(2). Here, note that § 102(a)(2) applies only to U.S. patents and published patent applications (plus PCT international application publications designating the U.S.). So any non-patent materials like books, journal articles, web pages, and the like will only be able to qualify as prior art under § 102(a)(1) and only the exceptions under § 102(b)(1) need to be considered. Similarly, any foreign patents or published applications will only be able to qualify as prior art under § 102(a)(1) and only the exceptions under § 102(b)(1) need to be considered.

Second, under the § 102(b)(1) exceptions that apply to a “disclosure in a printed publication,” there are two possibilities: (A) disclosures made by (or on behalf of) an inventor within the one-year grace period, and (B) where an inventor made a qualifying public disclosure that pre-dated the printed publication. Where they apply, these exceptions establish a “critical date” one year before the effective filing date of the inventor’s patent application (assessed claim-by-claim). In practical terms, exception (B) will rarely arise, partly because it requires satisfying exception (A) plus additional requirements. The more common of the two exceptions is that an inventor’s own printed publication disclosures up to one year prior to a new patent application filing will not count against that inventor as prior art in the U.S.

Illustration of Timeline for U.S. Patent Filing Grace Period
Illustration of Timeline for U.S. Patent Filing Grace Period

One of the more important aspects of these exceptions is that an inventor’s own prior patent application may not qualify as prior art against that inventors own later application depending on when the prior application is published. This situation can arise when a later application does not formally claim priority to the inventor’s own prior application.

These exceptions to prior art status are rather unique to U.S. patent law. Most other countries follow more of an absolute novelty approach, with no grace period for delayed patent filings. So keep in mind that every jurisdiction will have its own rules for what counts as prior art and those rules offer differ from those in the U.S.

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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

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Patents Q&A

What is the On-Sale Bar?

Overview of the On-Sale Bar

Novelty and non-obviousness requirements for patentability are assessed based on the contents of the “prior art”. Older patents and publications generally count as prior art. But public uses and on sale activities can count as prior art too. Prior “on sale” and public use activities of others (competitors) generally constitute prior art. Though an inventor’s own activities can potentially be treated as prior art as well. An inventor placing his or her claimed invention on sale prior to filing a patent application may be treated as prior art against that later application, unless a patent filing grace period applies. To account for the 1-year statutory grace period, it is common to say that an “on-sale bar” arises when an invention is commercially exploited by an inventor before a “critical date” that is one year prior to the effective filing date of the relevant claim(s) of the patent application. If an “on-sale bar” applies, it qualifies as prior art under 35 U.S.C. § 102(a)(1) against a given claim, for both novelty and obviousness analyses. Under current U.S. law, the on-sale bar applies to commercial sales activities that happen anywhere in the world—though older (pre-AIA) laws limited it to on-sale activities involving the U.S.

There are some nuances as to what does or does not qualify as placing an invention “on sale”. A two-part test is applied in the U.S. A patent claim is invalid or unpatentable under the on-sale bar if, before the critical date, the invention was both:

  1. the subject of a commercial sale or offer for sale; and
  2. “ready for patenting.”

Pfaff v. Wlls Elecs., Inc., 525 U.S. 55, 67 (1998).

This analysis hinges on how an invention is claimed. Depending on what specific subject matter is claimed in a patent or patent application, and how broadly or narrowly it is claimed, the on-sale bar analysis may lead to different conclusions. Also, the on-sale bar is subject to an experimentation exception when an inventor’s own activities are involved.

On-sale bars differ by jurisdiction. Many other countries have an absolute novelty requirement without a patent filing grace period. And some other countries have no on-sale bar at all, or one that applies only to sales in that particular country. It is important to consider the specific law in each individual country where patent protection is sought if sales activities have already taken place. Commercial exploitation of an invention might bar patenting in some countries but not others, depending on the specific circumstances involved.

Furthermore, it is important to note that the on-sale bar is just one among many potential bars to patentability. Public use or printed publication bars, for instance, might arise out an inventor’s or competitor’s activities occurring prior to filing a patent application.

Purpose

The on-sale bar serves a number of purposes. Principally, it avoids an extension of patent protection beyond the statutory term. Modern patent laws are premised on granting only a limited monopoly in a claimed invention in exchange for disclosure of the invention. If an inventor could commercially exploit or profit from an invention and then much later still seek a patent, the expiration of that patent would effectively be extended beyond the intended limits. Also, the public notice function around the exclusive rights granted in patents would be frustrated if patent rights could spring up long after an invention became commercially available. The on-sale bar also protects the public’s right to retain knowledge already in the public domain.

When dealing with an inventor’s own actions, this means an inventor has to make a choice between patenting his or her invention or keeping it secret:

“it is a condition upon an inventor’s right to a patent that he shall not exploit his discovery competitively after it is ready for patenting; he must content himself with either secrecy, or legal monopoly.”

Metallizing Eng’g Co. v. Kenyon Bearing & Auto Parts Co., 153 F. 2d 516, 520 (2nd Cir. 1946)

Inventors are not permitted to have things both ways, or, to have their cake and eat it too. Though, in practical terms, not all inventions lend themselves to secrecy. It may be possible to maintain secrecy over certain manufacturing processes or the identities of certain materials used in a liquid solution—like a proverbial “secret formula”. But it is usually impossible to keep the physical/mechanical configuration of a product secret except by not selling or publicly using it at all. That means patent protection may be the only way to have market exclusivity in certain types of inventions.

U.S. patent laws do, however, provide a one-year grace period for patent filings, unlike many other countries. And an inventor’s own experimental activities are excepted from the on-sale bar. But these are essentially the only exceptions to a general policy requiring that inventors promptly seek patent protection or forfeit rights patent rights by commercializing their inventions.

Another important purpose of the on-sale bar mentioned above is to prevent patents from removing things that are already commercially available from the public domain. While much of the discussion that follows emphasizes inventors’ own activities, which is often the primary question when these issues arise, on-sale bars can apply to commercial activity by anyone. If someone else had already placed something on sale, it usually counts as prior art against a later-filed patent claim (unless the later-filing inventor qualifies for the prior disclosure exception under 35 U.S.C. § 102(b)(1)(B)). It does not matter if the person or entity that previously commercialized something chose not to patent it. The on-sale bar is an independent bar to later patenting that does not depend on someone having previously patented or attempted to patent something.

Sales

Commercial sale of an invention before the critical date gives rise to an on-sale bar. Though a sale for experimental purposes is distinguished from a commercial sale and is excluded from the on-sale bar. A commercial sale normally involves transferring property rights (that is, title to the goods) for consideration that the buyer pays or promises to pay the seller for the thing bought or sold. However, in this context, commercially leasing an inventive product is treated as a commercial sale even though title to the goods is not transferred—this includes standard computer software licenses for software-enabled inventions, for example. Even a single commercial sale can give rise to an on-sale bar. It does not matter whether or not the details of the invention are made available to the public through the sale, or that it was a sale subject to buyer approval (that is, in a “sale on approval” where the buyer could potentially return the goods to the seller). Moreover, using an inventive product while providing commercial services triggers the on-sale bar too.

When an invention is for a method or process, a sale of that inventive method or process before the critical date will give rise to an on-sale bar. For example, if an invention is a method of manufacturing something, selling goods manufactured using that inventive process constitutes a sale. Additionally, selling a product that embodies the essential features of an inventive method of use will constitute an on-sale bar for the claimed method of use. However, whether inventive activity pertains to an invention involving a method, an apparatus, or both, may not be apparent until a patent application is prepared—or possibly not until much later when particular claims are allowed or granted.

Merely licensing or assigning rights to an invention does not constitute a sale. Though a commercial sale of an invention by a licensee before the critical date would give rise to an on-sale bar, because the licensee is considered to stand in the shoes of the patentee, and that would include commercial use of a method of making a product by a licensee.

However, an inventor outsourcing manufacturing to validate the manufacturing process for regulatory approval only and stockpiling the invention only for that inventor do not, without more, constitute a sale where the inventor maintains control of the invention. But commercial agreements between a patentee and its supplier or distributor are not exempt from the on-sale bar, such as where title to the goods or passes to the distributor or where the manufacturer/supplier is free to market the product or disclose the process for manufacturing the product to others. Also, method or process inventions cannot be stockpiled, and outsourcing the commercial use of an inventive method/process of making something would generally trigger the on-sale bar.

Commercial Offers for Sale

A commercial offer for sale before the critical date, without a sale actually being completed, also establishes an on-sale bar. The U.S. Supreme Court has described commercial offers for sale as occurring when an invention is first marketed commercially. The offer must be commercial rather than experimental in character, just as with completed sales. Also, as with completed sales, a commercial offer for sale of a method/process invention before the critical date give rise to an on-sale bar, though mere licenses and assignments of rights do not.

However, lower courts have effectively read-in a significant limitation on what constitutes a “commercial offer for sale” based on commercial contract law. “Only an offer which rises to the level of a commercial offer for sale, one which the other party could make into a binding contract by simple acceptance (assuming consideration), constitutes an offer for sale . . . .” Group One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041, 1048 (Fed. Cir. 2001). Lower courts have pointed to general commercial law for these determinations rather than the law of the particular state where the transaction took place, looking to the Uniform Commercial Code (UCC) for guidance. Though the UCC does not define “offer”. So courts have further looked to the Restatement (Second) of Contracts, which says, “An offer is the manifestation of willingness to enter into a bargain, so made as to justify another person in understanding that his assent to that bargain is invited and will conclude it.” (§ 24). The Restatement also says there must be intent to be bound, because “[a] manifestation of willingness to enter into a bargain is not an offer if the person to whom it is addressed knows or has reason to know that the person making it does not intend to conclude a bargain until he has made a further manifestation of assent.” (§ 26). Although no particular language is required to constitute an offer for sale, lower courts have said (citing and extending § 33(3) of the Restatement, which says that leaving proposed term(s) open indicates a non-“offer”) that a communication that fails to include material terms (such as quantities, time of delivery, place of delivery, or product specifications) is not an “offer” in the contract sense. Though a “quote” (sent in response to a request for quotation) has been considered equivalent to a commercial offer for sale when it included essential price, delivery, and payment terms (plus alternative product amounts that reflected multiple distinct offers for sale).

These judicially-created limitations on commercial offers for sale mean that the standard is an ambiguous one based on the involved parties’ subjective intents and understandings, rather than a bright-line one. As long as current lower court interpretations prevail, whether a communication naming a price constitutes a commercial offer for sale or mere preparations for future offers for sale (that alone do not give rise to an on-sale bar) depends upon the facts and circumstances of each particular case. So early sales, marketing, and promotional efforts may or may not trigger the on-sale bar, depending on the circumstances (including whether and how a customer responds to them). A salesperson vaguely discussing the possibility of offering a product in the future without the potential customer actually being able to accept a specific offer on specific terms may not qualify as a “offer for sale” under current lower court case law.

Keep in mind that other types of bars to patentability might apply even if there was no sale or commercial offer for sale. For instance, an advertisement of an invention before the critical date might qualify as a “printed publication” bar instead of (or in addition to) an on-sale bar. And a non-experimental public use of an invention before the critical date would give rise to a public use bar. The on-sale bar is only one among many potential bars to patentability that must be considered.

Secret Sales & Offers for Sale

In the U.S., the on-sale bar still applies to a confidential, private, or otherwise secret commercial sale or offer for sale before the critical date. This means that merely having a non-disclosure agreement (NDA) or other contractual confidentiality terms in place will not avoid triggering an on-sale bar. An NDA might still help establish that a sale or offer for sale was primarily experimental rather than commercial, depending on all the other relevant circumstances. And the existence of an NDA may mean that a given use of an invention does not give rise to a public use bar or that the confidential exchange of documents does not constitute a printed publication bar. Moreover, an NDA may make discovery of prior sales by third parties difficult to identify. But any commercial sale or offer for sale of an invention triggers the on-sale bar, regardless of the public versus confidential/secret nature of such commercial exploitation. While having an NDA in place may have certain advantages for the parties involved, it will not avoid an on-sale bar in the U.S. when there has been non-experimental commercial exploitation.

Applicable law in other countries may be different, however. Indeed, countries that lack a distinct on-sale bar might even allow a later inventor to obtain a patent and enforce it against the prior inventor who did not patent or publicly use the invention (because all use was confidential rather than public).

Experimentation Exception

There is an experimental sale exception to the on-sale bar. A sale or offer for sale that is primarily for experimental purposes, as opposed to commercial exploitation, does not raise an on-sale bar. Though the experimental sale exception applies only if the commercial exploitation is merely incidental to the primary purpose of experimentation to perfect the invention.

Only certain activities are considered experimental, depending on the purpose or intent behind them. A use may be “experimental” only if it is designed to: (1) test claimed features of the invention, or (2) determine whether an invention will work for its intended purpose. This judicial definition of what is experimental applies to both the public use bar and the on-sale bar. But experimental use cannot occur after an invention has actually been “reduced to practice”; once an inventor realizes that the invention as later claimed indeed works for its intended purpose, further alleged “experimentation” may constitute a public use and/or on-sale bar. Similarly, a contract characterizing commercial activities as “equipment testing” will be insufficient to establish experimental use if unnecessary, that is, if the testing could have been performed satisfactorily before or without the sale.

Courts have applied the following factors to determine if a sale constitutes experimentation or commercial exploitation, though not all factors will apply in any given situation:

  1. the necessity for public testing,
  2. the amount of control over the experiment retained by the inventor,
  3. the nature of the invention,
  4. the length of the test period,
  5. whether payment was made,
  6. whether there was a secrecy obligation,
  7. whether records of the experiment were kept,
  8. who conducted the experiment,
  9. the degree of commercial exploitation during testing,
  10. whether the invention reasonably requires evaluation under actual conditions of use,
  11. whether testing was systematically performed,
  12. whether the inventor continually monitored the invention during testing, and
  13. the nature of contacts made with potential customers.

Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1353 (Fed. Cir. 2002).

While the experimentation exception to the on-sale bar has long been recognized in the U.S., it is rather difficult for an inventor to qualify for it. Successfully invoking it might even be more rare in the on-sale bar context than in the public use context. So think of it almost like a unicorn defense against invalidity. And when a patent is enforced, any reliance on this experimentation exception by the patentee is certain to be challenged by the accused infringer. Therefore, it may be advisable in many situations to avoid relying on it (other than as a backup plan or “plan B” fallback position). A better strategy is to file a patent application before accepting or seeking any payment for an invention, or at least to file within one year of any payment, request for payment, or any other activities that could potentially be seen as exploiting or seeking to profit from an invention.

All this makes sense if we turn back to the basic purposes of the on-sale bar. The experimentation exception arises because the inventor is not really extending the expiration of patent rights when he or she is not yet certain that the invention is viable or complete. A key reason the experimentation exception against the on-sale bar is so rarely established is that inventors normally don’t try to sell inventions that they know are not yet in working order. When they have sold or offered to sell things, that tends to give rise to an inference that the inventor really did believe the invention was sufficiently workable for the buyer’s purposes (despite after-the-fact inventor denials that often come across as self-serving). If anything, the exception is more likely to apply where the only reasonable experimental testing involves using the invention in connection with commercial services under close supervision—as in the famous case City of Elizabeth v. American Nicholson Pavement Co., 97 U.S. 126 (1878) where the inventor garnered more sympathy than most.

“Ready for Patenting”

An invention is “ready for patenting” when, prior to the critical date, the invention is either: (1) reduced to practice; or (2) depicted in drawings or described in writings of sufficient nature to enable a person of ordinary skill in the art to practice the invention.

Reduction to practice means being embodied in a distinct form, like through construction of a working prototype. Reduction to practice happens when occurs when the inventor/seller had possession of the claimed subject matter and that it was shown or known to work for its intended purpose. For something to qualify as a reduction to practice, it must show that the invention works for its intended purpose beyond a probability of failure but that need not be established beyond a possibility of failure. Importantly, reduction to practice does not require that the invention, when tested, be in a commercially satisfactory stage of development—for utility patents this analysis is from the standpoint of technical feasibility rather than marketability or saleable appearances. If does not, however, require that the seller recognize that his or her on-sale invention possesses specific later-claimed characteristics when there was no question that the invention was useful at the time it was placed on sale.

Whether or not an enabling disclosure has been documented (in the absence of actual reduction to practice) is generally assessed in the same way as for priority claims. In any event, any time there are engineering specifications available that are sufficient for use to manufacture an invention, or to allow a customer to know specifically what is being purchased, the invention will usually be considered ready for patenting.

Difficult questions arise when advance development agreements or pre-availability contracts are involved. In some situations, a contract may be signed for a seller to deliver to a customer at a later date something not yet invented . In other words, the customer understands that goods meeting certain requirements do not yet exist but believes that the seller will be able to devise one or more inventions that will make delivery of suitable goods possible in the future. This is a situation where the customer does not know upfront exactly how those goods will be configured. But certain general requirements, goals, or objectives that the goods be better, faster, lighter, etc. would likely be set forth in such an advance contract. When does the on-sale bar arise in these situations? The answer is it depends when the invention was conceived subsequent to the signing of the contract. For purposes of the on-sale bar, it is initially viewed as an open offer to sell an idea for a product (or service) that is converted into a “commercial offer for sale” at whatever time the relevant invention is later conceived:

“[A]n invention cannot be offered for sale until its conception date. Hence, if an offer for sale is made and retracted prior to conception, there has been no offer for sale of the invention. In contrast, if an offer for sale is extended and remains open, a subsequent conception will cause it to become an offer for sale of the invention as of the conception date. In such a case, the seller is offering to sell the invention once he has conceived of it. Before that time, he was merely offering to sell an idea for a product.”

August Tech. Corp. v. Camtek, Ltd., 655 F.3d 1278, 1289 (Fed. Cir. 2011)

When, exactly, conception happens may very well be disputed. But once there are drawings that might enable the invention to be made and used, or it is actually reduced to practice (even if the inventive aspect is not yet appreciated or recognized), an on-sale bar can arise.

Joint research & development agreements potentially raise further limits on application of the on-sale bar where they do not bear commercial fruit and are cloaked in confidentiality. That is to say that research & development activities, even where conducted jointly, may pertain only to the process of invention or related experimentation rather than to commercial activities. But, as always, this will depend on the specific circumstances involved, including what the applicable contract(s) say. There is not always a bright line separating research & development and on-sale activities when joint efforts are involved.

Anytime there is already a contract or commercial proposal of an idea for a product (or process), the inventor must diligently pursue a patent filing after something inventive is actually conceived to ensure that filing occurs within the one-year U.S. grace period. Though keep in mind that the ways these issues are treated in other countries may differ.

Best Practices and Words of Caution

Assessments of potential on-sale bars must be approached with caution. The treatment of potential on-sale bar activities is governed by somewhat subjective and imprecise standards in the USA. The consequences of incorrectly relying on an experimental sale exception to the on-sale bar can be severe for both the patentee and the patentee’s legal counsel. For instance, if a court later rejects an inventor’s determination that a pre-critical date sale was experimental, an entire patent might be found unenforceable in addition to specific claims being found invalid—if information about the on-sale bar was withheld from the USPTO with deceptive intent (which can be inferred). Moreover, because on-sale bar activities apply to obviousness analyses too, commercialization of an earlier version of a product or process before the critical date potentially be relevant to the obviousness of a later-developed variation or improvement.

The best strategy to avoid an on-sale bar worldwide is to file a patent application before any activities that could potentially be seen (in the light least favorable to the patentee) as exploiting or attempting to profit from an invention, or, at least in the USA, to file within one year of any such activities. But if there has already potentially been definite commercial sales activity before the critical date, or anything that might potentially be viewed as the commercial exploitation of an invention before the critical date, consider explicitly disclosing it to the USPTO in order to satisfy the duty of disclosure. This is because court rulings about experimental sales will happen only many years later and may be driven by sympathies and impressions given by witnesses at least as much as the “cold” factual record. And there are risks of self-serving biases when inventors make these determinations themselves.

In order to make a legal determination about whether or not an on-sale bar applies, there must first be a sufficient investigation of the relevant facts. It would be nice if the legal standards for on-sale bars allowed for a straightforward and uncomplicated assessment. But the reality is that these are complicated, nuanced legal determinations that depend on a variety of specific facts that will differ from one situation to the next. If important relevant facts are unknown, overlooked, or even concealed, then it may be impossible to reliably determine whether an on-sale bar applies in a given situation. So, beyond the lack of bright-line legal standards as to certain aspects, the dependency of these legal analyses on underlying fact gathering is yet another reason caution is merited.

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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

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Patents Q&A

What is the Patent Filing Grace Period?

Obtaining rights in an invention require affirmatively filing a patent application. There is a limited one-year grace period in the U.S. to file a patent application after the invention has been disclosed or commercialized before patent rights are lost. In the context of an inventor’s own prior activities, the term “critical date” refers to the beginning of the grace period one year before the effective filing date of claimed invention. Understanding this grace period is important in order to know when patenting becomes barred, or may have already been barred, due to an inventor’s own prior actions.

The U.S. patent laws generally bar patenting if “the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention” or if “the claimed invention was described in a patent . . . or in an application for patent published or deemed published . . . [that] names another inventor and was effectively filed before the effective filing date of the claimed invention.” (35 U.S.C. § 102(a)). In other words, disclosures and commercial exploitation of an invention prior to the critical date qualify as “prior art” that can be held against a later-filed patent or patent application. Such prior art is used to evaluate the patentability (or validity) of a claimed invention.

Graphic of grace period timline
Illustration of Timeline for U.S. Patent Filing Grace Period

However, there is a one-year grace period for filing a patent application following a disclosure or commercialization of the invention by an inventor (or someone who obtained that subject matter from an inventor). This grace period is formally stated as follows:

(b) Exceptions.-

(1) Disclosures made 1 year or less before the effective filing date of the claimed invention.- A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if-

(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor

***

(2) Disclosures appearing in applications and patents.-A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if-

(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;

*** or

(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. [see also § 102(c) regarding inventions under joint research agreements that may satisfy this provision]

35 U.S.C. § 102(b) (Post-AIA)

So if an inventor has publicly disclosed an invention or placed it on sale, the clock has begun on the one-year deadline to file a patent application. Under current U.S. law, disclosures and on-sale activities happening anywhere in the world trigger the grace period filing deadline. But disclosure of an invention more than one year earlier represents a complete bar to patentability. The grace period is not extendable.

This 1-year grace period is somewhat unique to U.S. patent law. Most other countries have what is called an absolute novelty requirement. That means a patent application must be filed before there is any disclosure of the invention. Though the specific things that do or do not count as a prior disclosure vary somewhat by country (for instance, sometimes the country in which the disclosure was made matters, and sometimes secret sales are not considered public disclosures). What this means is that even though the U.S. has a patent filing grace period, the applicant needs to consider the most restrictive patenting requirements among all relevant jurisdictions. If it is desired to pursue foreign patent protection, or even just to preserve the possibility of foreign filings, then it is important to file a patent application before any disclosure or sales activity to ensure that patent rights are preserved for all foreign countries.

Another aspect of this grace period is the exception set forth in 35 U.S.C. § 102(b)(1)(B), which says a disclosure falling within the grace period does not qualify as prior art (under § 102(a)(1)) if “the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.” In other words, a disclosure by someone other than the applicant (occurring one year or less before the effective filing date) can potentially be defeated and removed from the realm of “prior art” if the inventor or applicant had previously publicly disclosed the claimed invention (one year or less before the effective filing date). So, in very limited situations, a prior public disclosure within the statutory grace period can also potentially aid a patent applicant against competitors trying to patent or commercialize the invention.

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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

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Patents Q&A

What Are the Ways to Challenge a Granted Patent?

It may be desired to proactively challenge the validity or patentability of a granted U.S. patent for a variety of reasons. What are the available options to challenge a granted patent either at the U.S. Patent & Trademark Office (USPTO) or in court? The following table compares the different types of proceedings and summarizes the applicable standards.

————————Post Grant Review (PGR)Inter Partes Review (IPR)Derivation Proceeding (DP)Ex Parte Reexamination (Reexam)District Court Civil Action — Declaratory Judgment (DJ Action)
Eligible Target Patents Based on Effective Filing Date (EFD)AIA patents only: EFD ≥ March 16, 2013Any patent AIA patents only: EFD ≥ March 16, 2013Any patentAny patent
Available Grounds§§ 101, 102, 103, 112 (no best mode), including double patenting§§ 102 and 103 based on patents and printed publications (only)Derived invention without authorization§§ 102 and 103 based on patents and printed publications (only)Any (except best mode)
Timing RequirementsWithin 9 months of patent grant (or reissue)AIA patents: after 9 months (end of PGR)
Non-AIA patents: after issuance
Both: only within 1 year of civil action
Within 1 year of grant or publication of claim, whichever is earlierAnytime patent remains assertableAnytime patent remains assertable
Claim Interpretation StandardSame as district court civil action (Phillips)Same as district court civil action (Phillips)Same as district court civil action (Phillips) Broadest reasonable interpretation (BRI) except
Expired patents: Phillips
Markman / Phillips
Eligible Filing PartiesAny 3rd partyAny 3rd partyInventorAnyoneAnyone with standing (substantial controversy between parties having adverse legal interests of sufficient immediacy and reality; requires affirmative act by patentee)
ThresholdMore likely than not unpatentableReasonable likelihood petitioner will prevailSubstantial evidenceSubstantial new question of patentability (SNQ)Plausibility (Iqbal / Twombly)
Estoppel (Attaching to Challenger)Raised or reasonably could have raisedRaised or reasonably could have raisedNone by statute, but derivation-specific administrative estoppel and deferenceNone by statute, but administrative estoppel and deferenceRes judicata and collateral estoppel (for civil actions only)
Click to download table in PDF format
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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

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Patents Q&A

What Are the Requirements for Patentability?

3 Basic Requirements

In order to get a patent for an invention it must be patentable. There are three basic requirements for patentability:

An applicant gets to define an invention in “claims” of a patent application. Patentability is always analyzed by looking at those claims. If a claims fails any requirements for patentability, then the applicant is not entitled to a patent on it. Though it is still possible to consider the patentability of an invention in an informal sense even before any claims are written. However, judgments about patentability (or validity) can be challenging and subject to dispute.

There are other patentability requirements, such as enablement and definiteness. But these other requirements go more to the form and content of a patent application. You might even say those other requirements are about an application being presented in a patentable form rather than being about the patentability of an invention in the abstract. Only the three basic requirements are discussed below.

Utility

Utility is about the nature of the invention itself. If you write a novel it can never be patented. That is because it is not “useful”. So it fails the utility requirement. But that is an easy example. Nobody thinks of the contents of a book as an invention. So what “useful” inventions are patent-eligible? U.S. patent law states, “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor . . . .” Despite that broad definition, laws of nature, natural phenomena, and abstract ideas are not patent-eligible. A claimed invention that is nothing more than one of those things is “preemptive” and fails the utility requirement.

Most man-made inventions have utility. Questions about patent eligibility (utility) tend to arise most for software, methods of medical diagnosis and treatment, biotechnology/life sciences, and business methods. In those areas, the way a patent application and its claims are drafted tends to get a lot of scrutiny.

For design patents, ornamentality is required instead of utility. Ornamentation can be (a) the shape of an article itself, (b) something applied to or embedding in an article, such as surface ornamentation, or (c) a combination of the first two possibilities. Also, the ornamentation must be applied to an “article of manufacture”. A picture standing alone is not eligible for design patent protection. But aside from ornamentality replacing the utility requirement, both of the other patentability requirements (novelty and non-obviousness) still apply to designs.

Novelty

Novelty means that an invention cannot be identical to something already known. For instance, if a claimed invention was already disclosed in someone else’s earlier patent then it lacks novelty. In this respect, assessing novelty involves a comparison that first requires an understanding of what came before. Lack of novelty is commonly referred to as “anticipation”.

However, only certain documents and information can be considered for patentability. Whether or not something qualifies as “prior art” against a given patent claim must first be established. Usually the question is whether a given patent or publication is old enough to be considered prior art. U.S. patent laws set forth somewhat complicated definitions of prior art and novelty. But, in general, earlier patents, printed publications, public uses, and sales can all potentially qualify as prior art. Even inventors’ own past actions and writings can count as prior art against them.

Sometimes novelty is described as “absolute novelty” because inventors are charged with constructive knowledge of all prior art. In other words, it doesn’t matter whether the inventor actually knew about the relevant prior art or not. The novelty requirement bars more than inventions copied from elsewhere. Even obscure disclosures about inventions that are not commercial available—and may never have been—may bar patentability.

Novelty also takes into account inherent teachings. It goes beyond explicit, literal prior art disclosures to further encompass what is unstated but necessarily implied. So, for example, if the prior art structure is the same as what is claimed, then previously unappreciated properties and benefits of that structure are likely inherent even if unstated in an earlier patent.

Novelty and anticipation always refer to what was (explicitly or inherently) disclosed in a single prior art reference. This distinguishes novelty from obviousness, which is discussed below.

Non-Obviousness (or Inventive Step)

Non-obviousness means an invention must represent a significant advance over what was already known in order to be patentable. U.S. patent laws say that even if the claimed invention has novelty, it will not be patentable “if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious . . . to a person having ordinary skill in the art to which the claimed invention pertains.” Many other countries use the term “inventive step” to refer to the concept of non-obviousness.

Obviousness is formally analyzed by first determining the scope and content of the prior art, the differences between the prior art and the claim at issue, and the level of ordinary skill in the relevant art. Those facts must be taken into account when drawing a legal conclusion about obviousness or non-obviousness. So-called secondary considerations for non-obviousness can also be considered. But such secondary evidence is often not available.

obviousness graphic
Conceptual Illustration of Anticipation/Obviousness/Non-Obviousness

It is possible to conceptualize obviousness as a fuzzy zone around the closest prior art. In that zone the invention is too trivial to be patentable. An invention must go far enough beyond the prior art to be worthy of a patent. Though exactly how far is hard to establish with a bright line. The main way to reach non-obviousness is to claim something that solves a technical problem in the prior art. You do need an invention and cannot merely claim the absence of the prior art or the absence of a problem. After all, patentability is about encouraging inventions that positively contribute to human knowledge. That is how this ties in to the reason patents exist.

In practical terms, patent application claims are often rejected by an examiner for obviousness based on a combination of multiple prior art patents. In those situations, no single earlier patent discloses all the features or elements of a given patent claim. But the examiner can assert that someone would have been motivated to combine or modify the different teachings of multiple earlier patents to arrive at the claimed invention (with a reasonable chance of success). These are often difficult judgments to make. And there can be a temptation to slide into hindsight bias. These are some of the reasons why obviousness is sometimes called the ultimate condition for patentability.

Have an invention you would like to patent? Have a brand you would like to register as a trademark? Concerned about infringing someone else’s intellectual property? Is someone else infringing your IP? Need representation in an IP dispute? Austen is a patent attorney / trademark attorney who can help. These and other IP issues are his area of expertise. Contact Austen today to discuss.