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Pfaff v. Wells Electronics, Inc.
(U.S. Supreme Court)
On-sale doctrine for patents
In this unanimous decision on 11/10/1999, the Supreme Court clarified the legal standard for the "on-sale bar" of the patent laws. Under 35 U.S.C. § 102(b), a patent is invalid if the patent application was made more than one year after the "invention" was first offered for sale. Pfaff, the inventor, designed a new computer chip socket and, even though he had not yet produced a socket, he sent detailed sketches of the socket to Texas Instruments Inc., which placed an order for the new sockets based on the drawing over a year before Pfaff filed his patent application. The Court held that this action was sufficient to constitute placing the "invention" on sale. In reaching this holding, the Court set forth a two-factor test for determining when the on-sale bar applies: One, the product must be the subject of a commercial offer for sale more than one year prior to the patent application. Two, the invention must be "ready for patenting" more than a year prior to application — a standard that can be satisfied by showing either that the invention had been reduced to practice or that the inventor had prepared drawings or other descriptions that would enable a reasonably skilled artisan to practice the invention.
This decision should be of great interest to any company with holdings or interests in intellectual property, and of particular importance to companies that file patent applications.
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