Introduction
The patent system rewards inventors by granting them exclusive rights, including allowing them to commercially exploit their inventions for the full patent term, in exchange for disclosing their inventions to the public. This is commonly referred to as the "patent bargain." However, given these lengthy exclusive rights, it is essential to prevent a patentee from commercially exploiting an invention for even longer than the 20-year statutory term. The on-sale bar addresses this issue.
The U.S. Supreme Court and U.S. Court of Appeals for the Federal Circuit have specified a multi-pronged analysis for determining whether the on-sale bar applies. But decisions such as Crown Packaging Tech., Inc. v. Belvac Prodn. Mach., Inc., 122 F.4d 919, 924 (Fed. Cir. 2024) and others suggest the on-sale bar analysis actually rests on a context-driven approach of determining whether actions by patentees (in Part I of this series) or the patentee's suppliers or third-parties (in Part II of this series) demonstrate attempts to "commercially" exploit an invention for longer than the statutory term.
Background
The on-sale bar has been part of the patent code for almost 190 years. See Patent Act of 1836, ch. 357, ' 6, 5 Stat. 117, 119; Pfaff v. Wells Electronics, Inc., 525 U.S. 55, 65 (1998). It prevents a patent applicant from commercially exploiting the invention before the required time for filing. The current on-sale bar is codified in ' 102(a)(1), defining prior art under ' 102 and ' 103 to include subject matter "in public use, on sale, or otherwise available to the public before the filing date of the claimed invention." 35 U.S.C. ' 102(a)(1)(emphasis added).
In Crown Packaging, the Federal Circuit listed five factors for an on-sale bar under the pre-America Invents Act (AIA) version of the statute, ' 102(b):
"The statute requires that (1) the subject of the offer for sale must embody the claims of the asserted patent; (2) the offer for sale must have been 'in this country'; and (3) the offer for sale must occur before the critical date of the asserted patent. Meds. Co v. Hospira, Inc. (Medicines I), 827 F.3d 1363, 1372, 1374 (Fed. Cir. 2016) (en banc) (quoting 35 U.S.C. ' 102(b) (pre-AIA)).
Pfaff v. Wells Electronics, Inc., 525 U.S. 55 (1998), also makes clear that, for the on-sale bar to apply, two additional conditions must be met before the critical date: the invention is (4) 'the subject of a commercial offer for sale' and (5) 'ready for patenting.' Id. at 67; see also Quest Integrity USA, LLC v. Cokebusters USA Inc., 924 F.3d 1220, 1227 (Fed. Cir. 2019) (citing Pfaff, 525 U.S. at 67)."
122 F.4d at 924. Although Crown Packaging involved a pre-AIA patent, the same analysis applies post-AIA, except that ' 102(a)(1) does not require the sale to have been made "in this country" (factor (2) above). Thus, for post-AIA patents, factor (2) does not apply.
A five-factor test under ' 102(b), or a four-factor test under ' 102(a)(1), may seem daunting to a defendant in patent litigation. In reality, factors (2) (if applicable) and (3) rarely require in depth analysis, as it is usually clear when and where an alleged offer was made.
Further, although factor (1) refers to the subject matter of the offer for sale embodying the claims of the asserted patent, it has long been accepted that the on-sale bar applies when assessing obviousness as well as anticipation, thus limiting the analysis required by the court. See LaBounty Mfg., v. U.S. Int'l Trade Comm'n, 958 F.2d 1066, 1071 (Fed. Cir. 1992) ("'If a device was...
