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Chickens First or Eggs: Pre-filing Commercialization Efforts

By Matthew W. Siegal and Daniel C. Wiesner

Is it the chicken or the egg? Your client InventCo thinks it has several great new products, but it needs money to bring the products to the U.S. marketplace. Tooling costs money, as does producing sufficient inventory, and don't even mention what needs to be put aside to pay the patent attorney ' all for products that might flop in the market. “You've got to spend money to make money,” InventCo's president says. “Too bad I can't offer them for sale now and see if any of them actually sell before I start the patenting process, but I remember what you told me about 1-year on-sale bars and what happed to that Pfaff guy,” he continues. “Hold on a minute,” you tell him, “there's a way around Pfaff.”

The on-sale bar to patentability, 35 U.S.C.A. '102(b), prevents the patenting of any invention “in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.” In Pfaff v. Wells Electronics, Inc., 525 U.S. 55, 119 S.Ct. 304 (1998), the Supreme Court addressed the stage of development an invention had to be at, when offered for sale, in order to trigger the 102(b) bar.

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