Inventions: Be Aware of the ‘On Sale Bar’

Apr 17 '23

To qualify for a utility or design patent — the most common types of patents — your invention must be “novel” under the law. In essence, you can’t patent an idea that has previously been patented

What Constitutes a “Sale?”

    The U.S. Supreme Court issued a ruling in 1998 stating the one-year grace period for the on-sale bar begins when two conditions are met:
    The product must be the subject of a commercial offer for sale.
    The invention must be ready for patenting. “That condition may be satisfied in at least two ways,” the High Court stated:”by proof of reduction to practice before the critical date; or by proof that 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.”

– Pfaff v. Wells Electronics, No. 97-1130

or invented by someone else — even if the patent was obtained outside the United States.

Naturally, the best approach is to obtain a patent for your invention as soon as possible. But that’s not always the most practical approach. Fortunately, you might be able to rely on the “on sale bar” to provide some legal protection.

Here’s how it works: The law grants you a one-year “grace period” to test the waters before you actually file a patent application. In other words, you can offer an invention for sale during this grace period without any qualms. As long as you file for a patent prior to the one-year anniversary of the sale or offer for sale, no one else can patent your work. On the other hand, once the 12-month period has elapsed, you are statutorily barred from obtaining a patent.

Be aware that a sale does not have to be consummated to trigger the “on sale” bar. As soon as you make an offer to sell an invention, the clock starts ticking. The same is true if you agree to a sale “off the record” where no money actually changes hands. Therefore, you should mark the time from the date that any type of offer has been made.

There is a notable exception to this rule for experimental use of an invention. For example, if you sell a product in order to obtain feedback on its chances for commercial success, you may be able to claim that the sale was experimental. Since the law in this area is open to interpretation, you should not rely on the exception for experimental use without consulting with your attorney.

Other factors may come into play including similar statutory bars for publication and public use of an invention. The law is riddled with twists and turns, so be sure to consult with your patent attorney along the way.