Pfaff v. Wells Electronics, Inc., 525 U.S. 55 (1998)
This case involved interpretation of 35 U.S.C. § 102(b), which states that no one can patent an invention that was “on sale” in this country more than one year before filing the patent application. Prior to the critical date (one year before the filing date), Pfaff sent a sketch of his concept of a new computer chip socket to Texas Instruments, who placed an order for the sockets. At that time, Pfaff had not made and tested a prototype of his invention – in fact, no actual socket was even made until after the critical date. He subsequently sued Wells Electronics for infringement of the patent, and they counterclaimed that his patent was invalid because of the on-sale bar.
A unanimous Supreme Court provided two requirements for when the on-sale bar will apply: (1) when there is a commercial offer for sale; and (2) when the invention is ready for patenting. An invention that is “ready for patenting” has either been reduced to practice before the critical date, or “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.” Why did the Court come to this conclusion? First, because the word “invention” in the Patent Act refers to conception of the invention, not to a physical embodiment of the idea. Second, because an invention may be patented before it is reduced to practice. In Pfaff’s case, the drawings he sent to Texas Instruments before the critical date fulfilled the “ready for patenting” requirement, and he had accepted a purchase order, fulfilling the “commercial offer for sale” requirement. Thus, Pfaff was out of luck.
In creating a “ready for patenting” requirement, the Supreme Court may have inadvertently created more uncertainty for inventors. In the future we will examine how the Federal Circuit has applied both the “commercial offer for sale” and “ready for patenting” requirements since Pfaff.
This case involved interpretation of 35 U.S.C. § 102(b), which states that no one can patent an invention that was “on sale” in this country more than one year before filing the patent application. Prior to the critical date (one year before the filing date), Pfaff sent a sketch of his concept of a new computer chip socket to Texas Instruments, who placed an order for the sockets. At that time, Pfaff had not made and tested a prototype of his invention – in fact, no actual socket was even made until after the critical date. He subsequently sued Wells Electronics for infringement of the patent, and they counterclaimed that his patent was invalid because of the on-sale bar.
A unanimous Supreme Court provided two requirements for when the on-sale bar will apply: (1) when there is a commercial offer for sale; and (2) when the invention is ready for patenting. An invention that is “ready for patenting” has either been reduced to practice before the critical date, or “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.” Why did the Court come to this conclusion? First, because the word “invention” in the Patent Act refers to conception of the invention, not to a physical embodiment of the idea. Second, because an invention may be patented before it is reduced to practice. In Pfaff’s case, the drawings he sent to Texas Instruments before the critical date fulfilled the “ready for patenting” requirement, and he had accepted a purchase order, fulfilling the “commercial offer for sale” requirement. Thus, Pfaff was out of luck.
In creating a “ready for patenting” requirement, the Supreme Court may have inadvertently created more uncertainty for inventors. In the future we will examine how the Federal Circuit has applied both the “commercial offer for sale” and “ready for patenting” requirements since Pfaff.
2 comments:
Excellent phrase
I have removed this phrase
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