2133.03 Rejections Based on “Public Use” or “On Sale” [R-07.2022]

2133.03 Rejections Based on “Public Use” or “On Sale” [R-07.2022]

[Editor Note: This MPEP section is applicable to all applications. For applications subject to the first inventor to file (FITF) provisions of the AIA, the relevant time is “before the effective filing date of the claimed invention”. For applications subject to pre-AIA 35 U.S.C. 102, the relevant time is “at the time of the invention”. Phillips v. AWH Corp., 415 F.3d 1303, 1313, 75 USPQ2d 1321, 1326 (Fed. Cir. 2005). See MPEP § 2152.02(c) through (e) for a detailed discussion of the public use and on sale provisions of AIA 35 U.S.C. 102. Many of the court decisions discussed in this section involved applications or patents subject to pre-AIA 35 U.S.C. 102. These court decisions may be applicable to applications and patents subject to AIA 35 U.S.C. 102 but the relevant time is before the effective filing date of the claimed invention and not at the time of the invention.]

An applicant may make an admission, or submit evidence of sale of the invention or knowledge of the invention by others, or the examiner may have personal knowledge that the invention was sold by applicant or known by others. If the activity is by an entity other than the inventors, one or more joint inventors, or the assignee, such as sale by another, manufacture by another or disclosure of the invention by the inventor, one or more joint inventors, or the assignee to another then both pre-AIA 35 U.S.C. 102(a) and (b) may be applicable. If the evidence only points to knowledge within the year prior to the effective filing date then pre-AIA 35 U.S.C. 102(a) applies. However, no rejection under pre-AIA 35 U.S.C. 102(a) should be made if there is evidence that inventor made the invention and only disclosed it to others within the year prior to the effective filing date. Pre-AIA 35 U.S.C. 102(b) is applicable if the activity occurred more than 1 year prior to the effective filing date of the application.

Pre-AIA 35 U.S.C. 102(b) “contains several distinct bars to patentability, each of which relates to activity or disclosure more than one year prior to the date of the application. Two of these – the ‘public use’ and the ‘on sale’ objections – are sometimes considered together although it is quite clear that either may apply when the other does not.” Dart Indus. v. E.I. du Pont de Nemours & Co., 489 F.2d 1359, 1365, 179 USPQ 392, 396 (7th Cir. 1973). There may be a public use of an invention absent any sales activity. Likewise, there may be a nonpublic, e.g., “secret,” sale or offer to sell an invention which nevertheless constitutes a statutory bar. Hobbs v.United States, 451 F.2d 849, 859-60, 171 USPQ 713, 720 (5th Cir. 1971). It is noted that AIA 35 U.S.C. 102(a)(1) uses the same “on sale” term as pre-AIA 35 U.S.C. 102(b) and is treated as having the same meaning. Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 139 S.Ct. 628, 129 USPQ2d 1189 (2019). See MPEP § 2152.02(d).

In similar fashion, not all “public use” and “on sale” activities will necessarily occasion the identical result. Although both activities affect how an inventor may use an invention prior to the filing of a patent application, “non-commercial” pre-AIA 35 U.S.C. 102(b) activity may not be viewed the same as similar “commercial” activity. See MPEP § 2133.03(a) and § 2133.03(e)(1). Likewise, “public use” activity by an applicant may not be considered in the same light as similar “public use” activity by one other than  an applicant. See MPEP § 2133.03(a) and § 2133.03(e)(7). Additionally, the concept of “experimental use” may have different significance in “commercial” and “non-commercial” environments. See MPEP § 2133.03(c) and § 2133.03(e) – § 2133.03(e)(6).

It should be noted that pre-AIA 35 U.S.C. 102(b) may create a bar to patentability either alone, if the device in public use or placed on sale anticipates a later claimed invention, or in conjunction with 35 U.S.C. 103, if the claimed invention would have been obvious from the device in conjunction with the prior art. LaBounty Mfg.v.United States Int’l Trade Comm’n, 958 F.2d 1066, 1071, 22 USPQ2d 1025, 1028 (Fed. Cir. 1992).

POLICY CONSIDERATIONS

• (A) “One policy underlying the [on-sale] bar is to obtain widespread disclosure of new inventions to the public via patents as soon as possible.” RCA Corp. v. Data Gen. Corp., 887 F.2d 1056, 1062, 12 USPQ2d 1449, 1454 (Fed. Cir. 1989).
• (B) Another policy underlying the public use and on-sale bars is to prevent the inventor from commercially exploiting the exclusivity of his [or her] invention substantially beyond the statutorily authorized period. RCA Corp.v.Data Gen. Corp., 887 F.2d 1056, 1062, 12 USPQ2d 1449, 1454 (Fed. Cir. 1989). See MPEP § 2133.03(e)(1).
• (C) Another underlying policy for the public use and on-sale bars is to discourage “the removal of inventions from the public domain which the public justifiably comes to believe are freely available.” Manville SalesCorp. v. Paramount Sys., Inc., 917 F.2d 544, 549, 16 USPQ2d 1587, 1591 (Fed. Cir. 1990).