Sales Activity: MedCo, Helsinn, and the AIA

by Dennis Crouch

In The Medicines Co. v. Hospira an en banc Federal Circuit confirmed the validity of MedCo’s Angiomax product-by-process patent claims over an on-sale challenge. More than one-year before filing the patent application, MedCo had hired a third-party supplier to provide three batches of the drug using an embodiment of the claimed processes.  The question was whether this ‘supply contract’ constituted a commercial offer for sale sufficient to trigger the on-sale bar of Section 102(b) (pre-AIA).   In the appeal, the Federal Circuit held that the supply contract was “for performing services” rather than a triggering sale.  “[A] contract manufacturer’s sale to the inventor of manufacturing services where neither the title to the embodiments nor the right to market the same passes to the supplier does not constitute an invalidating sale.”

The en banc MedCo opinion focuses on a pre-AIA patent, but it seems clear to me that the limits here are equally applicable to post-AIA patents.  Of course, many (including the USPTO and DOJ) argue that this type of activity would also be disqualified as on-sale because it was done under cover of secrecy rather than publicly.

In the pending case of Helsinn v. Teva is set to answer the AIA question – whether under the AIA “on sale” activity is limited to activity that is “available to the public.” In a new filing, the accused infringer (Teva) has looked to distinguish the MedCo — noting that “[u]nlike the MedCo. contract, where the patent-holder paid another party to manufacture its drug, the distribution contract [in Helsinn] was an offer for sale.”  The letter-of-authority goes on to point the court to the language on MedCo supporting the Metallizing Engineering policy:

MedCo. also reaffirmed multiple precedents finding “confidential transactions to be patent invalidating sales under §102(b).” Although a transaction’s “confidential nature … weighs against the conclusion that [it was] commercial,” it remains “a condition upon an inventor’s right to a patent that he shall not exploit his discovery competitively after it is ready for patenting.” (quoting Metallizing Eng’g). That is what Helsinn did here.

Oral arguments have not been scheduled in the case, but I expect that it will be scheduled for early Autumn 2016. While the Helsinn case is not yet en banc, it has drawn significant amicus interest.

Of these positions, the former would make it easier to invalidate patents and the latter would make it more difficult.  If the Overrule-Metallizing-Engineering position prevails, I expect that the “on sale” question become an evolutionary vestige and the whole prior art focus of 102(a) will be on whether purported prior art was sufficiently “available to the public.”

 

60 thoughts on “Sales Activity: MedCo, Helsinn, and the AIA

  1. 6

    Dennis,
    Please do not conflate “secret sales” with “prior art.” Contrary to your characterization, my amicus brief did not argue that “Secret Sales and Offers Should Still Count as Prior Art under the AIA.” This is because “secret sales” were never counted as “prior art”—they were deemed patent-forfeiture activities (if made more than one year prior to filing) under constitutionally-based equitable policies enunciated in Pennock and Metallizing Engineering.. The phrase “novelty and loss of right to patent in the pre-AIA title of Section 102 serves as an indication that there are two separate patent-defeating components: prior art, and patent-forfeiture activities under equitable policies. My amicus brief shows that the AIA did not change these latter policies. See link to bit.ly .

    Anon correctly pointed out below that removal of the phrase “loss of right to patent” from the title of Section 102 and inserting a colloquy in the Congressional Record indicates intent of some of the drafters to do away with Metallizing Engineering. However, some drafters, or even some of the bill’s sponsors, do not speak for the whole Congress, and a title for a statutory provision does not replace its operative plain content. It is my view that futile efforts spanning years prior to the enactment of the AIA to remove from the statute the terms “on sale” and “public use”—and instead succeeding only to insert the term “or otherwise available to the public”—shows that Congress as a whole refused to repeal Metallizing Engineering. My brief further elaborates on the evidence for this contention.

    For almost a decade, I was involved with advocacy on behalf of small businesses and startups pertaining to the language of Section 102. From 2009 to 2011, I interacted with congressional delegates and staff, and I experienced first-hand the obfuscation by key Senate Judiciary Committee staff as they encountered objections to changing the equitable policies underlying the “on sale” and “public use” bars. Five months before the AIA was enacted, I wrote about this obfuscation effort, including on the drafters’ plan since 2009 to use the infamous Senate colloquy in lieu of statutory language clarity. See my April 2011 article at link to bit.ly . I do not think that the courts will fall for this obfuscation plan.

    1. 6.1

      So have I got this right, from Mr Katznelson:

      1. You can “repeal” a Statute but you can’t “repeal” a decision by a court, such as the Metallizing decision.

      2. If the AIA (passed by Congress) amends 102 by adding the words “or otherwise available to the public”, the courts thereafter have to proceed on the basis that Congress was deliberate in adding those words, adding them for a purpose.

      3. If, further, in the new Statute passed by Congress, Section 102 has a new title, it is to be implied that the old title had to go because it no longer fits with the amended script of the Section. The courts should take that into account too, shouldn’t they?

      1. 6.1.1

        MaxDrei,
        Of course Congress can repeal a court decision – it only has to pass a statute that by its plain language actually repeals it. This Congress did not do in the AIA. As to your other comments, I refer you to standard treatises on statutory construction principles. For application of these principles, you should read the amicus briefs in this case, including mine.

        1. 6.1.1.1

          While you say that “Congress did not do that,” it is beyond clear that given the multiple elements that I have presented, that that is precisely what Congress DID do.

          This is not a “hide an elephant in a mousehole” situation, because (as I have pointed out) Congress was already explicit that they were massively changing patent law (in fact, aiming for arguably the single largest change in US patent law history).

          Further, that this WHOLE complicated thing was meant to be purposefully complicated is evidenced by the action of Congress to not have a separability option. The AIA was purposefully built to be “too big to fail.”

          (Side note/ I still have not gotten through your writings, but do you address the Prior User Right angle? This angle is further evidence that Congress was actively elevating the “status” of Trade Secrets in parallel to (and hence separate from) patent protection).

          Any analysis of earlier court decisions takes on a decidedly different “hue” when one correctly separates the different types of “protection” arising under different regimes of law. Far too often, critical thinking overlooks this factor and merely assumes that the past “reasoning” on times of protection were enunciated correctly, but those earlier writings were flawed on this point.

    2. 6.2

      Ron K: It is my view that futile efforts spanning years prior to the enactment of the AIA to remove from the statute the terms “on sale” and “public use”—and instead succeeding only to insert the term “or otherwise available to the public”—shows that Congress as a whole refused to repeal Metallizing Engineering.

      Is there a problem with the equitable doctrine set forth in Metallizing Engineering? Why would “some people” want to get rid of it?

      I experienced first-hand the obfuscation by key Senate Judiciary Committee staff as they encountered objections to changing the equitable policies underlying the “on sale” and “public use” bars.

      Who was proposing to change the equitable policies, Ron? Who objected to the changes? Who “obfuscated” in response? You were there, Ron. Tell everyone.

      This stuff is obviously pretty important to you. If “obfuscating” bothers you, then start talking plainly instead of beating around the bush.

      Thanks in advance.

      1. 6.2.1

        MM,
        It appears you did not read my April 2011 paper. Reading it will help you understand that those who sought and pushed for changing Section 102 from FTI to FTF were those engaging in the obfuscation. They also introduced the red herring of interference proceedings as the reason to change Section 102. Surely, you do know who these actors were – aren’t some of them your friends?

        1. 6.2.1.1

          Ron,

          I fully agree with you regarding the “red herring” nature of interferences – I have previously pointed out why such was indeed a “red herring,” as nearly all of those “bad” procedures were simply adopted (nearly) wholesale into the new PTAB regime.

          Let me also point out that I too was vocal about the dangers of what was going on with the AIA. Not perhaps as much as you (thank you by the way), but I was active on these boards and did directly call my representatives to explain that what was being proposed just did not match the rhetoric being offered.

          I will stress though that is also why, while on a similar page with you regarding wanting a better patent system, I do take a colder (polar) view of just what Congress DID do when they passed the AIA. I simply do not give credit to the unsubstantiated “they could not have meant to do THAT” type of argument, precisely because there are so many points in the AIA where the influence DID “mean to do THAT.”

        2. 6.2.1.2

          You wrote a paper on this so you should be able to quickly type out a few of the relevant names and a one or two sentence summary of their motivations.

          Surely, you do know who these actors were

          Surely, if I did I wouldn’t have asked you to name them.

          aren’t some of them your friends?

          LOL I doubt it. Otherwise I would have heard all about these fun and games first hand at Thanksgiving or some other party.

    3. 6.3

      Thanks Ron, I will have to give your stuff a read, as I currently understand that what you merely want to be “true,” just is not true, or at least is sufficiently not true.

      That is, yes there were plenty of “connivers” about in the AIA political muckery. I remember your own debate with Lemley on a certain issue.

      However, as I have explained, the Soliloquy, the statement of extensive change to 102/103 – and why, and the change in title ALL reflect the same end result. The problem you have is that the Soliloquy was indeed on official record BEFORE the final Senate vote, and EVERY Senator had the option and the opportunity to put on the record ANY counter view.

      No one did so.

      Like it or not – and quite apart from the Constitutional problems (and if you have followed this blog at all, you know that I have pointed out several of those in the AIA), the law – by Congress – IS as I have described: the new “patentably new” is merely “new to you,” and the old (and quite frankly incorrect) conflation of time of protection under two very different legal realms of patent protection and of trade secret protection have been separated by Congress, the only Constitutioally authorized branch of the government to so write the law.

      1. 6.3.1

        Anon,
        I do not disagree with your analysis that there is some “legislative history” that points in the direction of the repeal of Metallizing Engineerin (ME). Moreover, my April 2011 comment on the Senate colloquy being a day after passage and thus inapplicable, was made in reference to S. 23 – the AIA as passed by the Senate for the first time. Thus, technically I agree with you that it ultimately was available to the full Congress before passage of the bill in the House and final passage thereafter in the Senate. I also stipulate that all these elements – title of Section 102, Senate colloquy, and insertion of “otherwise available to the public” – were specifically intended by a small number of Senators to convey an “elephant.” My point is that in so doing, these sponsors were “hiding elephants in mouseholes.” Whitman v. Amer. Trucking Assoc., 531 U.S. 457, 468 (2001). As my amicus brief details, there is other legislative history to the contrary, that I believe is more compelling, indicating that Congress as a whole, did not repeal ME. As I have shown at great length in my brief, even if one puts aside my arguments on constitutionality, there are other good reasons to believe that the courts will not be persuaded that a colloquy of three Senators is controlling over established canons of statutory construction.

        1. 6.3.1.1

          Ron,

          Your own argument about the “skullduggery” proved too much.

          It just does not matter whether “one or two or three” Senators politicked their way into what is actually written in the law; rather, it matters that they DID make the law as I have commented AND add in the fact that NOT “one or two or three” any other Senator (or Congressman) went on the record after the Soliloquy and gave any other impression “of Congress.”

          I see that your paper has a link to an earlier paper discussing the Constitutional infirmity that you think may exist with a repeal of Metallizing – do you have a direct link to that paper?

          (Unlike Malcolm, I find it very helpful to read and understand opposing viewpoints)

          1. 6.3.1.1.1

            Anon,
            I appreciate that you believe that what Congress DID is repeal ME. My point about the “three Senators” is that we only have evidence that they believed that this is what the Senate did, or intended to do. That does not mean that the majority of the members of Congress—those in both chambers who voted to enact the AIA—believed that they are repealing ME. This is because the plain language of the statute (passed by the whole Congress—what Congress DID) does not say what the colloquy said. This is the dispute we have now.

            To be sure, there is “legislative history” that was specifically created to impart the notion that the AIA indeed repealed ME. However, I showed legislative history to the contrary; I did not merely make “they could not have meant to do THAT” type of argument. I also acknowledge that my constitutional argument may not be persuasive to some (and per your request, you can read my article at link to j.mp ) and I make different, independent and stronger arguments in my brief, on which you should focus. I will make a deal with you: I will stipulate the relevance of every legislative history indicia you and the PTO Examination Guidelines advance in support of the ME repealed by AIA notion, if you acknowledge that the following legislative history element contrary to your notion is just as relevant:

            In April 2011, fully cognizant of, and after publication of the Senate colloquy, the AIA bill managers in the House proposed an amendment to effectuate the Senate colloquy by removing the words “public use” and “on sale” and changing “available” to “disclosed” in § 102(a)(1). This amendment would have made the plain meaning of the statute very clear: ME is repealed. However, the majority of the committee objected and voted down the managers’ amendment. See the discussion of this on page 19 of my amicus brief at link to bit.ly. The majority of the House committee apparently understood the Senate colloquy and they did not agree with it. They rejected the managers’ amendment and left “on sale” and “public use” in the statute. And THAT is what Congress DID.

            So you see Anon, legislative history can be read both ways. Will you acknowledge that there is a reasonable reading contrary to yours? If so, we can agree to disagree on what the courts will ultimately do. The point I make to many startups is that they cannot delay filing in reliance on a potential “indefinite grace period” of the AIA because ME may not have been repealed and their patent may later be held invalid. Any legal advice to the contrary is risky and in my view may border malpractice. We just have to see how the courts will deal with Helsinn. One of the differing reasonable minds here will be proven wrong.

            1. 6.3.1.1.1.1

              Just noticed your post and wanted to say Thanks for the additional information Ron. I will definitely give the information a serious read.

              The conversation has continued on a more recent thread with yet another indicator of strengthening Trade Secrets (and Paul Morgan supplied another author’s view that buttressed the new additional point that I supplied. That piece may nullify your new addition as making the proposed House amendment moot (and still removing ME as per the desire of The Soliloquy).

  2. 5

    For good reasons why the AIA change in 102 did NOT overrule the equitable non-statutory, non-prior-art, Metallizing Engineering purely personal forfeiture doctrine for inventions that are NOT on sale [secret commercial processes to make commercial products that do not disclose that process] see “The Ambiguity in Section 102(a)(1) of the Leahy-Smith America Invents Act” 2011 Patently-O Patent Law Review 29.

    1. 5.1

      Except (again), Paul, that is expressly what happened.

      You tend to forget that 102 was NOT just strictly prior art, but was also personal forfeitures that served as prior art.

      Check out the change in section title – among MANY other things in the legislative history of the AIA.

      Your attempt is still stillborn.

      1. 5.1.1

        anon, there was a concerted effort to get “on sale and public use” out of the statute by Armitage and others for years. That failed because there were many in Congress unwilling to go that far. After the Senate passed the AIA, the colloquy you constantly reference took place. It counts for nothing. What counts is the effort by those congressmen who did not want to change 102(b), except to remove the 1 year grace period and “in the United States.”

        1. 5.1.1.1

          Ned,

          Quite simply, you are wrong (again).

          I have explained the timing of the Soliloquy. It very much is properly on the AIA congressional record BEFORE the final Senate vote.

          Further, this is also directly reflected in the purposeful change of title for section 102, and the EXPRESS purpose to change 102/103.

          No amount of your (and Paul’s) feeble attempts at rewriting recent history can change the black and white of the written record.

          I “get” that you and Paul just don’t like what happened – but denying that it happened is not going to make it “unhappen.” It is really embarrassing (for you) to mouth empty positions so very clearly contradicted by the written record.

          1. 5.1.1.1.1

            I have explained the timing of the Soliloquy. It very much is properly on the AIA congressional record BEFORE the final Senate vote.

            Please post a link to this “soliloquy” and explain, with reference to specific passages of the text of the soliloquy, why anybody should care about it.

            Otherwise you come across like a ranting g00fball. Again.

            1. 5.1.1.1.1.1

              Have to love the usual Malcolm meme of AccuseOthersOfThatWhichMalcolmDoes.

              Quite clearly, others are well familiar with what I am saying (even as they do not like it), and it is you that is the “ranting g00fball.”

              1. 5.1.1.1.1.1.1

                others are well familiar with what I am saying (even as they do not like it),

                Comedy gold.

          2. 5.1.1.1.2

            the black and white of the written record.

            Which “anon” will never explicitly cite, but will inside just pound the table and refer to in the abstract.

            Go figure. I guess it’s such a powerful strategery. After all, it’s worked so well for “anon” all these years.

            1. 5.1.1.1.2.1

              Ditto on the rant here.

              No one touches your Decade of Decadence record though Malcolm – you be “special” that way. ;-)

        2. 5.1.1.2

          Nowhere in the AIA Congressional Record is their any specific reference to “the Metallizing Engineering doctrine.”
          [Not to be confused with the AIA elimination of secret sales of products containing the invention from the “on sale” provision of 102 itself.]
          Reading Pfaff and other relevant Sup. Ct. cases discussing the relationship of trade secrecy to patenting cited in that article, it strains credulity to think that the Sup. Ct. would support a company commercially practicing a process protected by trade secrecy for 20 years and then getting valid patent protection on that same process for another 20 years whenever the secret was about to be exposed. Yet that is what those claiming the AIA statutory change overruled the equitable non-statutory doctrine of Metallizing Engineering are proposing.

          1. 5.1.1.2.1

            Does NOT need to name the doctrine specifically when there is already on record the fact that this was a deliberate and massive redo of 102/103 AND the Soliloquy AND the deliberate renaming of the section of law.

            Sorry Paul – if you want something different than what actually happened, but you just did not get that and you have to accept what actually happened.

            And guess what – it is NOT up to the Supreme Court to “support” the changes that Congress has chosen in regards to the differently timed realms of Trade Secret protection and Patent protection.

            Congress HAS done what they have done.

            “New to you” IS the new patentably new.

            (I will also point out the fact that Trade Secrets have been trending up as “deserving” is also reflected in the AIA in the sui generics “right” (really a submarine defense) of the Prior User Rights.

            1. 5.1.1.2.1.1

              Sorry Paul – if you want something different than what actually happened, but you just did not get that and you have to accept what actually happened.

              LOL — because “anon” decides what we all get.

              LOLOLOLOLOLOLOLOL

              And he’s so good at that.

              LOLOLOLOLOLOLOLOL

              1. 5.1.1.2.1.1.1

                because “anon” decides what we all get.

                Not at all.

                It is not true because it is I that says so.

                I merely say so because it is true.

                Feel free to do your own legwork to understand this – and if you actually can make a cogent legal case otherwise, PLEASE, by all means, have at it.

                But this CRP you engage in, this drive-by, meaningless ad hominem nothingness, just does not cut it.

                We both know that.

            2. 5.1.1.2.1.2

              it is NOT up to the Supreme Court to “support” the changes that Congress has chosen

              Meanwhile, back on planet Earth …

              1. 5.1.1.2.1.2.1

                On planet earth we have this thing called the Constitution and the delegation of authority with separation of powers.

                It’s an important concept for anyone associated with law to know and understand.

                You should look into it.

                1. On planet earth we have this thing called the Constitution and the delegation of authority with separation of powers.

                  Deep, deep stuff.

                2. LOL – the “deep stuff” poker tell that Malcolm has NOTHING intelligent to say on the merits.

                  What a chump.

          2. 5.1.1.2.2

            Paul, just reading Pennock, such an interpretation would be unconstitutional — so it will be avoided.

            1. 5.1.1.2.2.1

              It is NOT the “interpretation” that you should be concerned about Ned.

              Although, your “spin” here is symbolic of your greater fault in thinking that the Supreme Court can have unlimited “interpretation” powers.

              Will you ever share what the actual words of oath as an attorney are?

            1. 5.1.1.3.1.2

              Your delays already kicked this issue to the next term.

              Show.some.urgency.please.

  3. 4

    Dennis writes:

    “….the AIA question – whether under the AIA “on sale” activity is limited to activity that is “available to the public.” ”

    Where did the AIA phrase “make available to the public” come from? Can anybody tell me?

    Why was it written into the AIA? Is there anything on the Congressional record, I wonder.

    Europeans know it at least as far back as 1973, in the EPC definition of the prior art. Did the writers of the EPC borrow it from even earlier USA jurisprudence, I wonder, or did the writers of the AIA take it out of the EPC?

    1. 4.1

      Max, I think Bob Armitage and others were trying to harmonize US patent law with that of Europe. That was the whole point of the AIA.

      1. 4.1.1

        Thanks Ned. As I had supposed.

        They didn’t succeed, did they.

        In fact, by making 102 a mish-mash, neither one thing nor the other, they made 102 less clear, didn’t they.

        But perhaps that’s exactly the outcome lawyers hoped for, all along.

        1. 4.1.1.1

          perhaps that’s exactly the outcome lawyers hoped for, all along.

          We have had this conversation before MaxDrei, but the AIA was not drafted by lawyers.

          Unlike the Act of 1952, a different group of people (not lawyers) drafted the AIA.

          And yes, lots of purposeful machinations and downright sloppy drafting was the result. The politicians tried to make up for that by doubling down and explicitly rejecting a separability position, trying for a “too-big-too-fail” approach.

      2. 4.1.3

        (and you are doing that “only seeing that which aligns with Ned’s desire” thing again)

      3. 4.1.4

        To be clear both of you, it was widely recognized that any such “harmonization” was NOT going to happen in a single “all at once move.”

        So yes, MaxDrei, to a very real and certain extent, the “mish mash” was on purpose.

        Guys, this was noted like five years ago now.

  4. 3

    If on-sale activity must be public, then such activity would amount to a public use anyway, would it not? If not, why not? The invention would be disclosed to or in the hands of another on a non confidential basis.

    Assuming for the sake of this argument that public on sale is public use so that one could prove that the public disclosure of the invention was a public use regardless of the particulars of a sale, then such a holding that on sale would effectively be removed from the statute as redundant regardless of the ” otherwise available to the public language.”

    Further, as Dennis argues, if a public sale otherwise makes available to the public regardless of details of contractual arrangements, then on sale is effectively removed from the statute as redundant. Ditto, public use. Or printed publication. Pencil them out, just as Dennis suggests.

    One would think that Congress did not intend to legislate so [filtered], and such that on sale would be a bar regardless that the material was not otherwise available to the public.

    On sale should include even private commercial activity.

    Public use should require an embodiment.

    Printed publication is neither of the above.

    Then otherwise available to the public should be anything other than one of these that communicates the invention to the public, such as a demonstration in a public forum.

    1. 3.1

      One would think that Congress did not intend to legislate so [filtered], and such that on sale would be a bar regardless that the material was not otherwise available to the public.

      Except for the fact that Congress explicitly said the exact opposite.

      As you well know Ned.

      Really, why do you continue to pretend otherwise?

    2. 3.2

      Ned, did not “on sale” and “public use” activities quite frequently occur in parallel long before the AIA? As far as I am aware, there were only a couple of Fed. Cir. decisions on bars from secret sales.

      1. 3.2.1

        Paul, on sale and public use have always meant the same thing because the Supreme Court in Pennock used them equivalently. I am unaware of any case that did not hold that an on sale bar did not amount to a public use.

        From Metallizing, we recognize that secret commercial use of a invention by an inventor, his assigns or with his consent, coupled with public sales or uses of products or services made using the invention are deemed to be public uses, though private. Third party private uses are not public uses. This distinction is required by the policy objectives enunciated by the Supreme Court in Pennock — because the inventor could effectively have his cake and eat it too — exploiting an invention in secret for so long as he is able to keep it secret followed by filing a patent application and thereafter getting a legal monopoly for a fixed term. Such would effectively allows an indefinite amount of exclusivity.

        1. 3.2.1.1

          Ned, on sale and public use are not the same and the facts do not always create both. As one actual example, there was a patent suit in which it was discovered that the inventor had mentioned the concept of his invention to another scientist more than a year before filing his patent application, and that other scientist had gone back to his lab and promptly built and publicly demonstrated the operation of an embodiment of the invention. This was public use with no on sale.

          BTW, yes, some people do make that argument that secret uses by applicants “are deemed to be public uses, though private. [but] third party secret uses are not public uses.” That is the kind of semantic flippery of even the plain words of statutory language that gives the legal profession part of its reputation.

          1. 3.2.1.1.1

            Paul, no doubt there can be a public use that is not an on sale, but the contrary is not true.

            So, to those who speak of “public use” to mean “on sale” (Lemley for one), then they only confuse.

            From Pennock:

            What then is the true meaning of the words “not known or used before the application?” They cannot mean that the thing invented was not known or used before the application by the inventor himself, for that would be to prohibit him from the only means of obtaining a patent. The use, as well as the knowledge of his invention, must be indispensable to enable him to ascertain its competency to the end proposed, as well as to perfect its component parts. The words then, to have any rational interpretation, must 19*19 mean, not known or used by others, before the application. But how known or used? If it were necessary, as it well might be, to employ others to assist in the original structure or use by the inventor himself; or if before his application for a patent his invention should be pirated by another, or used without his consent; it can scarcely be supposed, that the legislature had within its contemplation such knowledge or use.

            We think, then, the true meaning must be, not known or used by the public, before the application. And, thus construed, there is much reason for the limitation thus imposed by the act. While one great object was, by holding out a reasonable reward to inventors, and giving them an exclusive right to their inventions for a limited period, to stimulate the efforts of genius; the main object was “to promote the progress of science and useful arts;” and this could be done best, by giving the public at large a right to make, construct, use, and vend the thing invented, at as early a period as possible; having a due regard to the rights of the inventor. If an inventor should be permitted to hold back from the knowledge of the public the secrets of his invention; if he should for a long period of years retain the monopoly, and make, and sell his invention publicly, and thus gather the whole profits of it, relying upon his superior skill and knowledge of the structure; and then, and then only, when the danger of competition should force him to secure the exclusive right, he should be allowed to take out a patent, and thus exclude the public from any farther use than what should be derived under it during his fourteen years; it would materially retard the progress of science and the useful arts, and give a premium to those who should be least prompt to communicate their discoveries.

            A provision, therefore, that should withhold from an inventor the privilege of an exclusive right, unless he should, as early as he should allow the public use, put the public in possession of his secret, and commence the running of the period, that should limit that right; would not be deemed unreasonable.

            If a mere use of the thing invented before the application were sufficient to bar the right, then, although the party may have been the first and true inventor, if another person, either innocently as a second inventor, or piratically, were to use it without the knowledge of the first inventor; his right would be gone. … If the public were already in possession and common use of an invention fairly and without fraud, there might be sound reason for presuming, that the legislature did not intend to grant an exclusive right to any one to monopolize that which was already common. There would be no quid pro quo — no price for the exclusive right or monopoly conferred upon the inventor…

            It is admitted that the subject is not wholly free from difficulties; but upon most deliberate consideration we are all of opinion, that the true construction of the act is, that the first inventor cannot acquire a good title to a patent; if he suffers the thing invented to go into public use, or to be 24*24 publicly sold for use, before he makes application for a patent. His voluntary act or acquiescence in the public sale and use is an abandonment of his right; …

            1. 3.2.1.1.1.1

              My post explaining that you are misreading Pennock – and not paying attention to the deference that the Court gave to the decisions of Congress in that decision – is caught in the filter.

                1. In the way of not paying attention to the deference that the Court gave to the decisions of Congress in that decision.

                  You are overplaying the Comstitutonal angle and mixing up two different regimes of timed protection as well (we’ve been over this separate aspect, and have noted that this mistake has also been made by other courts).

    3. 3.3

      Ned: If on-sale activity must be public, then such activity would amount to a public use anyway, would it not? If not, why not?

      Because selling a machine is different than using a machine.

      Was this a trick question or something?

  5. 2

    These issues are central to patent law, yet the statute is so poorly written that it leaves us all guessing. Certain public activities (public presentations) may fall outside the scope of AIA section 102 while non-public activities (confidential supplier agreements for the applicant) might fall within the scope of that section. So frustrating…

  6. 1

    First point:

    The question was… constituted a commercial offer forsale sufficient to trigger the on-sale bar” (emphasis added)

    I have to point out that that was NOT the question actually answered.

    Actual sale…?

    Perhaps.

    Offer for….?

    Not seeing that in what was actually written.

    Second point: seems clear to you to apply post-AIA…?

    Not at all. Not even close.

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