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New Ruling: Private Sales of Your Invention Can Prevent Securing Patent Protection

Josh Conley \ January 22, 2019


The U.S. Supreme Court addressed a question that has been up in the air since the America Invents Act went into effect.  In a unanimous decision, the Court held that the scope of the on-sale bar has not changed in scope. The full opinion can be viewed here.The on-sale bar finds that sales that occur more than a year before the filing of a patent application can be used against patentability.  Even if the sale is private. In its opinion, the Supreme Court found that the language was insufficient to hold that Congress had narrowed the scope of the on-sale bar.

Upon enactment of the AIA, there was a belief that the on-sale bar had been narrowed to only cover sales that allowed the public to determine what the invention is.  Congress has changed the language to read that patentability was barred if an “invention [that] was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.”  The argument is that the bolded phrase modifies all of the other disclosures.

This means that if you are selling your invention or even thinking about selling your invention, you should contact your patent attorney.  This is the case if the sales are being made all over the Internet or through a closed-door deal with another company. Otherwise, your one sale may be your last.

Remember, the AIA did change the scope of the on-sale bar.  It broadened its scope to sales that occur outside the United States.  Pre-AIA, only domestic sales were considered.

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