An inventor is precluded from obtaining a patent on an invention if that invention was sold (e.g., embodied in a product that is sold) more than one year prior to the filing date of the patent application claiming the invention. This is the so-called “on-sale bar.” The sale of the invention constitutes “prior art” for the claimed invention and invalidates the patent.

Seems pretty straightforward — file your patent application prior to the expiration of the one year sales period.

However, things got a bit messy with the America Invents Act (the “Act”). Prior to the Act, any sale, whether a sale to the public or a private, secret or confidential sale, constituted a “sale” of the invention for purposes of the on-sale bar. Here is the statutory language: “A person shall be entitled to a patent unless, the invention was … in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.”

However, the Act modified the on-sale bar. The Act provides that “A person shall be entitled to a patent unless the claimed invention was … in public use, on sale or otherwise available to the public” more than one year before the effective filing date.

So, is a secret, private or confidential sale (i.e., a sale that is not a public sale), a “sale” for purposes of the on-sale bar under the Act?

Earlier this month, the Federal Circuit heard arguments on this very issues. A District Court has held that the sale must be a “public sale” for purposes of the on-sale bar under the Act.

The USPTO, looking at the legislative history of the Act, has argued that the on-sale bar under the Act only applies to public sales and therefore a private, secret or confidential sale is not a sale for purposes of the on-sale bar under the Act.

So, the Federal Circuit will let us know shortly when a sale is not a sale.