SW Legal Educational Publishing

Clock Can Run on Patent Application Even if Invention Not Physically Produced
Description Supreme Court held that the one year on-sale period for a patent runs from when the invention is offered for sale and could be reduced to practice by one skilled in the art, not from when the invention is actually reduced to physical production.
Topic Intellectual Property
Key Words Patents, On-Sale Period
C A S E   S U M M A R Y
Facts Under the Patent Act, no one can patent an invention that has been "on sale" more than one year before filing a patent application. Pfaff sent sketches of an invention to Texas Instruments, which, based on the drawings, placed an order on 4/8/81. Pfaff filled the order in 7/81, which is when it was first physically produced. He applied for a patent on 4/19/82. Later, Pfaff sued Wells for infringement. The key issue was whether Pfaff had filed for a patent within one year of when the invention was on sale.
Decision Pfaff's patent is invalid because the invention had been on sale for more than one year in this country before he filed his patent application. The meaning of invention in the Patent Act refers to the inventor's conception rather than to a physical embodiment of that idea. Pfaff's clock began to run when the idea was offered to Texas Instruments, which was of "sufficient clearness and precision to enable those skilled in the matter" to produce the device. When offered by Pfaff the invention was the subject of a commercial sale and was ready for patenting.
Citation Pfaff v. Wells Electronics, Inc., --S.Ct.-- (1998 WL 777044)
or
119 S.Ct. 304 (1998)

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