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38 Ga. L. Rev. 1369 (2003-2004)
Lacks v. McKechnie and the Quest for On-Sale Bar Certainty

handle is hein.journals/geolr38 and id is 1393 raw text is: LACKS V. MCKECHNIE AND THE QUEST FOR ON-SALE BAR CERTAINTY I. INTRODUCTION The on-sale bar operates to prevent inventors from obtaining a patent if they have offered their invention for sale in the United States more than one year prior to filing for patent.' Although the statutory language seems relatively simple, application of the on- sale bar is anything but clear.2 Very early in the history of on-sale bar jurisprudence, the courts abandoned the plain language of the statute and developed a complex set of rules for applying the bars.3 In 1998, however, the Supreme Court stepped in to ameliorate what had become a rather volatile and unpredictable area of patent law.' In Pfaffv. Wells Electronics, Inc.,' because of the interest in certainty, the Court overruled the Court of Appeals for the Federal Circuit's totality of the circumstances7 and substantially com- plete8 tests, setting forth a new, two-prong test for determination of the on-sale bar: The on-sale bar applies when two conditions are satisfied before the critical date.' First, the product must be the subject of a commercial offer for sale .... Second, the invention ' See 35 U.S.C. § 102(b) (2000) (A person shall be entitled to a patent unless ... 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 ....). 2 See John F. Sweeney & Charles H. Sanders, The On-Sale Bar to Patentability: Understanding the Doctrine's Past, Present, and Future, 532 PRACTICING L. INST., PAT. COPYRIGHTS, & LITERARY PROP. COURSE HANDBOOK SERIEs 157, 159 (1998), available at WL 532 PLI/PAT 157 (noting that on-sale bar has confounded the Federal Circuit, spurred considerable legal debate, and left inventors feeling vulnerable to the prevailing judicial winds). 3 William C. Rooklidge, The On Sale and Public Use Bars to Patentability: The Policies Reexamined, 1 FED. CIRCUIT B.J. 7, 8 (1991). 4 Edward G. Poplawski & Paul D. Tripodi, II, The Impact of Federal Circuit Precedent on the On-Sale and *Public-Use'Bars to Patentability, 44 AM. U. L. REV. 2351,2390 (1995). 6 525 U.S. 55 (1998). 6 Id. at 66. 7 See infra notes 97-101 and accompanying text. s See infra notes 107-12 and accompanying text. The critical date is one year before the filing date of the patent application, and is determined retrospectively. Baker Oil Tools, Inc. v. Geo Vann, Inc., 828 F.2d 1558, 1563 (Fed. Cir. 1987). 1369

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