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Title 35, Patent, Supreme Court, Limitations on patentability, Invention on sale, Federal Circuit, Policy considerations, Reduction to practice


This Article posits a two prong approach to the on-sale bar. First, for the anticipatory version, the courts should expressly incorporate the law of enablement under 35 U.S.C. § 112 and of utility under 35 U.S.C. § 101 into the on-sale bar, thus providing a well-known body of law to promote predictability. Procedurally, the courts should establish a hierarchy of evidence, similar to the approach used in claim construction, that considers certain, more readily available information as the most pertinent while eschewing the use of expert testimony and other litigation based evidence. Second, for the obviousness version of the on-sale bar, there should not be a "ready for patenting" test. Instead, whatever is offered for sale should be considered within the public knowledge and useable to determine whether the inventor has claimed something more than a simple variation of what she offered for sale. This approach would better serve the policies underlying the on-sale bar and comports more readily with the concepts of "prior art" in patent law without impeding the predictability sought in this area.

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Berkeley Technology Law Journal


© 2000 Timothy R. Holbrook.