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On-Sale Bar By Upgrade? An Invention May Be Put On-Sale By a Contract Made Before the Date of Invention
A straightforward reading of the existing on-sale bar law suggests that companies and inventors, particularly in the software industry, may be unwittingly putting their inventions on sale by agreeing to deliver future improvements or versions of their product to their customers. This is a consequence of the initially counterintuitive principle that an invention may be put on sale by a contract or offer made before the invention even exists. This principle will often apply in the context of 'upgrade' contracts, where a seller contracts, at the time of a sale, to provide future 'upgrades' to a product. In that situation, the seller's pre-existing obligation to provide the invention as an 'upgrade' can put the invention on sale, even though the obligation arose before the invention was conceived.
The Supreme Court's decision in Pfaff v. Wells Electronics established a now-familiar two-part test for the on-sale bar: 'the on-sale bar applies when two conditions are satisfied before the critical date. First, the product must be the subject of a commercial offer for sale. . . . Second, the invention must be ready for patenting.' Pfaff v. Wells Electronics, 525 U.S. 55, 67 (1998). Though the Supreme Court did not say so expressly, it is clear that to invalidate a claim, the subject matter that is 'on sale' must anticipate or render obvious the claimed invention. In other words, the subject matter that is sold or offered is the prior art that is compared to the patent claims to determine validity.
The Pfaff decision did not address how one determines what is within the scope of what was offered or sold. As one might expect, this question must be answered with objective evidence. Counterintuitively, however, an offer or sale may encompass subject matter that was not conceived until after the offer or sale was made ' so long as the objective evidence shows that what was ultimately invented was included within the scope of what was originally offered or sold. Ferag AG v. Quipp, Inc., 45 F.3d 1562 (Fed. Cir. 1995). As a result of this principle, the first of the two Pfaff prongs can be satisfied prior to conception of the invention ' meaning that the 1-year on-sale bar period begins to run at the moment the invention becomes ready for patenting.
Major Differences In UK, U.S. Copyright Laws
This article highlights how copyright law in the United Kingdom differs from U.S. copyright law, and points out differences that may be crucial to entertainment and media businesses familiar with U.S law that are interested in operating in the United Kingdom or under UK law. The article also briefly addresses contrasts in UK and U.S. trademark law.
The Article 8 Opt In
The Article 8 opt-in election adds an additional layer of complexity to the already labyrinthine rules governing perfection of security interests under the UCC. A lender that is unaware of the nuances created by the opt in (may find its security interest vulnerable to being primed by another party that has taken steps to perfect in a superior manner under the circumstances.
Strategy vs. Tactics: Two Sides of a Difficult Coin
With each successive large-scale cyber attack, it is slowly becoming clear that ransomware attacks are targeting the critical infrastructure of the most powerful country on the planet. Understanding the strategy, and tactics of our opponents, as well as the strategy and the tactics we implement as a response are vital to victory.
Legal Possession: What Does It Mean?
Possession of real property is a matter of physical fact. Having the right or legal entitlement to possession is not "possession," possession is "the fact of having or holding property in one's power." That power means having physical dominion and control over the property.
Removing Restrictive Covenants In New York
In Rockwell v. Despart, the New York Supreme Court, Third Department, recently revisited a recurring question: When may a landowner seek judicial removal of a covenant restricting use of her land?