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Pfaff v. Wells Elecs - 525 U.S. 55, 119 S. Ct. 304 (1998)

Rule:

The on-sale bar to patentability applies when two conditions are satisfied before the critical date. First, the product must be the subject of a commercial offer for sale. An inventor can both understand and control the timing of the first commercial marketing of his invention. There is no reason why unmanageable uncertainty should attend a rule that measures the application of the on-sale bar of 35 U.S.C.S. § 102(b) against the date when an invention that is ready for patenting is first marketed commercially. Second, the invention must be ready for patenting. That condition may be satisfied in at least two ways: by proof of reduction to practice before the critical date; or by proof that prior to the critical date the inventor had prepared drawings or other descriptions of the invention that were sufficiently specific to enable a person skilled in the art to practice the invention.

Facts:

Under § 102(b) of the Patent Act of 1952, no one can patent an "invention" that has been "on sale" more than one year before filing a patent application. In early 1981, petitioner Pfaff designed a new computer chip socket and sent detailed engineering drawings of the socket to a manufacturer. He also showed a sketch of his concept to Texas Instruments, which placed an order for the new sockets prior to April 8, 1981. In accord with his normal practice, Pfaff did not make and test a prototype before offering to sell the socket in commercial quantities. He filled the order in July 1981, and thus the evidence indicated that he first reduced his invention to practice that summer. He applied for a patent on April 19, 1982, making April 19, 1981, the critical date for § 102(b)'s on-sale bar. After the patent issued, he lost an infringement action he filed against Wells Electronics, Inc. Subsequently, he brought another suit, alleging that a modified version of Wells' socket infringed six of his patent's claims. The District Court held that three of the claims were infringed, rejecting Wells' § 102(b) defense on the ground that Pfaff had filed the patent application less than a year after reducing the invention to practice. In reversing, the United States Circuit Court of Appeals concluded, among other things, that § 102(b)'s one-year period began to run when the invention was offered for sale commercially, not when it was reduced to practice.

Issue:

Was Pfaff’s patent invalid, which according to the appellate court began to run when the invention was offered for sale commercially?

Answer:

Yes.

Conclusion:

The Supreme Court of the United States affirmed the decision. The Court held that Pfaff's patent was invalid because the invention had been on sale for more than one year in this country before he filed his patent application. According to the Court, the on-sale bar applies when two conditions are satisfied before the critical date. First, the product must be the subject of a commercial offer for sale. Here, the acceptance of the purchase order prior to April 8, 1981, makes it clear that such an offer had been made, and there is no question that the sale was commercial. Second, the invention must be ready for patenting. That condition may be satisfied in at least two ways: by proof of reduction to practice before the critical date; or by proof that prior to the critical date the inventor had prepared drawings or other descriptions of the invention that were sufficiently specific to enable a person skilled in the art to practice the invention. This condition is satisfied here because the drawings sent to the manufacturer before the critical date fully disclosed the invention.

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