How the On-Sale Bar Could Prevent You From Obtaining a Patent

If a claimed invention has been "on sale" before the filing date of the patent, it might not be eligible for patent protection.

Inventors have the opportunity to obtain a patent from the U.S. Patent and Trademark Office (USPTO), thus giving them certain exclusive rights over their invention. These exclusive rights allow the inventor to profit by being the only entity able to take the invention to market for a certain period (typically, 20 years).

However, an important exception to that ability to obtain a patent is known as the "on-sale bar." What exactly is the on-sale bar, and how might this rule eliminate your ability to obtain a patent on your invention?

What the Patent Act and Recent Amendment Say About On-Sale Bar

Patent law in the United States is governed by the Patent Act, set forth in 35 U.S.C. 101 and following. The so-called on-sale bar is found at 35 U.S.C. § 102(b): "A person shall be entitled to a patent unless... the claimed invention 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..."

In other words, if the claimed invention has been "on sale" before the filing date of the patent, it might not be eligible for patent protection.

The language of this provision was amended with the 2011 passage of the Leahy-Smith America Invents Act. Before the amendment, Section 102(b) prohibited patents on inventions that were available for sale in the U.S. "more than one year prior to the date of the application for patent.” The amended passage bars patents on inventions when that invention is "on sale, or otherwise available to the public before the effective filing date of the claimed invention."

For decades prior to the amendment, courts had held that the provision's "bar" on patent protection would not be triggered unless the invention was the subject of a commercial contract for sale. In other words, courts construed the provision narrowly, essentially saying that for patent protection to be barred, the invention would need to have been the subject of a standard, public commercial sale (such as selling the product in a store). The amended phrasing created uncertainty as to whether the on-sale bar period had now changed.

Indeed, the U.S. Supreme Court recently clarified that even the private sale of a pre-patent invention to a single entity could trigger the on-sale bar. In other words, any marketing of the invention prior to obtaining patent protection could eliminate an inventor's ability to obtain a patent under 35 U.S.C. § 102(b).

Impact of On-Sale Bar on Inventors

The simple takeaway for inventors is to avoid selling, licensing, or otherwise commercially offering your invention on the open market prior to obtaining your patent.

This makes some sense from a policy perspective. After all, the purpose of a patent is to ensure that competitors cannot copy your invention. But if the product already exists on the market, unprotected by any patent, and competitors begin to imitate it, it would seem unfair to then strip them of their ability to compete whenever you get around to obtaining a patent.

Inventors should be wary of the on-sale bar as they consider any publicity, sales, or marketing of an invention prior to obtaining protection from the USPTO.

Learn more about patents and, when ready to explore obtaining one, check out Getting a Patent on Your Own. Or if you would like to speak with a patent attorney, review Nolo's directory of patent lawyers.

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