Law.com Subscribers SAVE 30%

Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.

KickerFeaturesTopicsTechnology Media and TelecomSectionsNewsLJN NewslettersThe Intellectual Property Strategist

The 'On-Sale' Bar After Pfaff

BY Robert W. Morris
September 29, 2009

Pfaff v. Wells Elecs., Inc., 525 U.S. 55 (1998) is widely recognized as a milestone in the annals of patent law for providing direction as to how courts are to analyze and apply the statutory “on-sale” bar to the granting of patents. See 35 USC ' 102(b) (“a person shall be entitled to a patent unless ' (b) the invention was ' on sale in this country, more than one year prior to the date of the application for patent in the United States”). Prior to Pfaff, courts used the “totality of the circumstances” test in determining whether an invention was on sale under ' 102(b). This open-ended standard provided little guidance, however, with the result that courts did not apply the test uniformly. Thus, for example, while some courts held that an invention could not be on sale under ' 102(b) unless the invention had been “reduced to practice,” others did not. Pfaff provided a much needed, clear, and uniform test for lower courts to apply. This article explores how the Federal Circuit has applied Pfaff in more recent cases.

Pfaff

In Pfaff, Texas Instruments asked Wayne Pfaff (“Pfaff”) to develop a new computer chip socket. In response to this request, Pfaff prepared drawings that depicted in detail how to make the socket. Pfaff, 525 U.S. at 58. In February or March 1981, Pfaff sent the drawings to a manufacturer and soon followed up by showing Texas Instruments a sketch of the socket. Id.

This premium content is locked for Entertainment Law & Finance subscribers only

  • Stay current on the latest information, rulings, regulations, and trends
  • Includes practical, must-have information on copyrights, royalties, AI, and more
  • Tap into expert guidance from top entertainment lawyers and experts

For enterprise-wide or corporate acess, please contact Customer Service at [email protected] or 877-256-2473

Read These Next
Yachts, Jets, Horses & Hooch: Specialized Commercial Leasing Models Image

Defining commercial real estate asset class is essentially a property explaining how it identifies — not necessarily what its original intention was or what others think it ought to be. This article discusses, from a general issue-spot and contextual analysis perspective, how lawyers ought to think about specialized leasing formats and the regulatory backdrops that may inform what the documentation needs to contain for compliance purposes.

Hyperlinked Documents: The Latest e-Discovery Challenge Image

As courts and discovery experts debate whether hyperlinked content should be treated the same as traditional attachments, legal practitioners are grappling with the technical and legal complexities of collecting, analyzing and reviewing these documents in real-world cases.

Identifying Your Practice's Differentiator Image

How to Convey Your Merits In a Way That Earns Trust, Clients and Distinctions Just as no two individuals have the exact same face, no two lawyers practice in their respective fields or serve clients in the exact same way. Think of this as a "Unique Value Proposition." Internal consideration about what you uniquely bring to your clients, colleagues, firm and industry can provide untold benefits for your law practice.

Risks and Ad Fraud Protection In Digital Advertising Image

The ever-evolving digital marketing landscape, coupled with the industry-wide adoption of programmatic advertising, poses a significant threat to the effectiveness and integrity of digital advertising campaigns. This article explores various risks to digital advertising from pixel stuffing and ad stacking to domain spoofing and bots. It will also explore what should be done to ensure ad fraud protection and improve effectiveness.

Turning Business Development Plans Into Reality Image

This article offers practical insights and best practices to navigate the path from roadmap to rainmaking, ensuring your business development efforts are not just sporadic bursts of activity, but an integrated part of your daily success.