"One of our arguments was that private sales-sales in which the invention has not been put into public use or led to the creation of some other type of prior art-should not provide the seller with a safe harbor against prior art under post-AIA 35 U.S.C. § 102(b)(1)(B), because a private sale by itself does not "publicly disclose" the invention per the terms of the statute."
"A related argument in our paper-perhaps the central argument-was that the on-sale bar should be "party-specific." That is, a sale by Aleida, by itself, should not bar independent inventor Bruno from obtaining a patent. Of course, the sale will often lead to the buyer putting the invention into public use, or generate a printed publication, or create some other type of prior art against Bruno. But the sale by itself should not bar Bruno."
"Unlike the public-use bar (which is about protecting the public's reliance interests), the on-sale bar is animated by the goal of preventing any one party from obtaining monopoly profits for more than the twenty-year statutory patent term. Accordingly, the principle behind the on-sale bar is not implicated if Aleida makes a sale but then Bruno files for a patent."
Private sales that do not put an invention into public use or create other prior art should not operate as a safe harbor under 35 U.S.C. § 102(b)(1)(B). The on-sale bar should be party-specific so that a sale by one party (Aleida) alone does not bar an independent inventor (Bruno) from obtaining a patent. The on-sale bar aims to prevent any single party from securing monopoly profits beyond the twenty-year statutory patent term, while the public-use bar protects the public's reliance interests. The Federal Circuit in Sanho Corp. v. Kaijet Tech. held that private sales do not publicly disclose inventions for §102(b)(1)(B) purposes.
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