Pursuant to Section 102 of the Patent Act, the “on-sale” bar can invalidate a patent when the claimed invention has been the subject of a commercial sale or offer for sale, and the invention is ready for patenting. Prior to the enactment of the Leahy-Smith America Invents Act, certain sales of (or offers to sell) the claimed invention — including a purely private transaction involving the patent applicant — could trigger the on-sale bar. However, the AIA amended the language of the patent statute, sparking discussion as to whether the on-sale bar now requires that sales or offers to sell be “public” to qualify as invalidating. In a case of apparent first impression, a district court in New Jersey recently interpreted the amended statutory language to require just that. The district court’s decision is currently on appeal to the Federal Circuit.

Originally published in Law360 - June 2, 2016.