By Samuel J. Petuchowski, a member of our Patent Practice Group
Under U.S. law, a patent may be obtained to protect a "process, machine, manufacture, or composition of matter" (35 U.S.C. § 101) that meets standards of utility, novelty and non-obviousness.
Whether a patented invention covers a particular product
- of the patentee, or of an infringer - is a legal conclusion that
hinges on whether all the requirements of one or more patent claims are
met by that product. (Patent counsel may be called upon to review
Telling apart a product
and an invention impacts both the validity and enforcement of patent
rights. One consequence of correctly making this distinction is that a
competitor may find a way to compete lawfully if he can design his own
product so as not to incorporate the claimed invention.
Another implication of the product/invention
distinction was recently addressed by the Federal Circuit Court of
Appeals in August Tech Corp. v. Camtek Ltd.
The Court considered the case of an inventor who offers a product for
sale but, at the time the offer is made, the product, as
conceptualized, does not contain the invention because the invention
has not yet been conceived.
In order to limit the
period of exclusive rights afforded by a patent, the statute provides
that when a product contains an invention, the inventor must file for
patent protection within one year of making the offer. Otherwise, the
opportunity to protect the invention will be lost and the invention
will be available for others to use. (New considerations enacted in the
America Invents Act will go into force in 18 months, and, while highly
significant, are outside the scope of this note.)
One of the questions addressed in August Tech. is:What happens if what is offered for sale is merely the idea
for a product, and, at the time of the offer, the product hasn't
assumed its final form? What if, in particular, the offer assumes that
some technical challenge can be met, and, indeed, further research
leads to an invention?
The Court dedicated almost
six pages to the question of whether the offer for sale of a product
necessarily starts a clock running, such that a patent application must
be filed within one year, highlighting the complexity of this area of
the law and the product/invention distinction.
Of necessity, the Court reckoned with the Supreme Court's decision in Pfaff v. Wells Elecs., Inc. (1998),
which held that two conditions must be met for an offer for sale to
bar patenting based on an application filed more than a year later: The
product must be the subject of a commercial offer for sale, and the invention
must be ready for patenting, which is to say that the invention must
have been conceived. The Supreme Court had stated that the word
"invention" refers to "the inventor's conception."
The Federal Circuit Court,
interestingly, made clear that if there has been an offer for sale
merely of an idea for a product and if, at the time the product was
offered, the invention has not yet been conceived, then the clock starts
to run only as of the conception date.
Thus, it becomes part of
the accused infringer's burden, in alleging that a patent is barred by
prior sale, to prove, by clear and convincing evidence, that the
inventor had conceived of the invention more than one year before
filing a patent application.
The case has been sent
back down to the district court in Minnesota and its resolution will
hinge on other grounds. Thus, the appellate court's grappling with the
question of what sets the clock ticking for purposes of the one-year
on-sale bar was somewhat theoretical.
"first-to-invent" premise of the U.S. patent law's ancien régime, an
inventor has typically been motivated to show an early conception of an
idea. This ruling, however, points to the importance, if an offer for
sale has been made, of showing a conception date that is not so early
that it predates the filing of the application by more than a year.
This is because, according to the ruling, the offer of the product
becomes an offer of the invention as of the date the invention is
Conversely, this case
highlights the importance of timely filing a patent application. Under
the "first-inventor-to-file" system, just introduced to the U.S. by the
America Invents Act, the importance of early filing is only magnified.
Legal Notice | © 2005-2011 Sunstein Kann Murphy & Timbers LLP, All Rights Reserved.
Lexis.com subscribers can explore/search Patent Law resources on Lexis.com or access any of these Mathew Bender Patent Law publications:
Non-subscribers can purchase Patent Law
treatises/resources and Mathew Bender publications from the LexisNexis Bookstore
For more information about LexisNexis products and
solutions connect with us through our corporate