Intellectual Property Law

Prototype Sewing Machine Sold to the Customer Created On-Sale Bar

By Michael F. Kelleher

The One Sentence Summary: Sale of a prototype sewing machine to a customer before the critical date created an on-sale bar making the patent invalid.

Federal Circuit Holdings:

• On-sale bar of 35 U.S.C. § 102(b) applied to sale of prototype sewing machine to customer before critical date. The fact that the inventor did not retain control of the prototype was dispositive in determining the use was not experimental despite the customer's experimentation with the invention.
• The prototype sold was a sufficient reduction to practice of the invention despite later improvement of the invention in a later version of the sewing machine.
• The sale of the third prototype was material for purposes of an inequitable conduct determination, but the district court on remand should consider whether there was intent to deceive.

Full post as published by IP Law Observer on February 21, 2008 (boomark / email).