EPC A.54.2 , U.S.C.35 102e ON SALE BAR

[Primzi]

Hi all,

can somebody explain if the sales of an intermediate from company A to company B, who subsequently makes a product and by that modifies the characteristics of the intermediate, so they can not be deduced from final product destroy novelty of a later patent application (by party C) specificaly for said intermediate?

What is the situation of A had a generic patent covering that intermediate and B was an exclusive licensee under that patent - and that only sales of intermediate were from A to B and to no other party?

Is there any difference between US and European interpetation?

Thanks

 

[Lysios]

If your question is

Is there is an on sales bar as in the US (http://en.wikipedia.org/wiki/On-sale_bar) in Europe?

then the answer is NO. But if the intermediate was available to the public, then this destroys novelty. So if there is a confidentiality agreement between A and B, the likelihood is high that the intermediate was not disclosed.

But in the US, the on sales bar exists even for secret sales.

Also for the case of the exclusive license it needs to be determined if the intermediate was available to the public.

 

[Fip]

You will have to consider, that A and B may keep on using the intermediate, if they fulfill the requirements of § 12 of the German Patent law (I suppose this will be the same in all or at least most other European coutries).

 

[Primzi]

But in the US, the on sales bar exists even for secret sales.

Are you refering to 102b?

What about 102g?
A person shall be entitled to a patent unless ?
(g(2) before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it.

Wouldn't a secret sale amount to concealing the invention?

P

 

[Lysios]

Wouldn't a secret sale amount to concealing the invention?

I do not think so. My interpretation would be that concealing is restricted to the inventor. Since the intermediate is secretly sold to B, it is not really "concealed" since it is accessible to B.

Anyway, there is case law that determines that secret sales are affected by the on sale bar. I do not have it at hand, but you can search via Google yourself. There is a lot of material available in that respect. But this is really important since already a secret offer for sale triggers the bar.

 

[Lysios]

OK, I was so kind to do a quick check. Here is a reference:

http://biojudiciary.org/subpage1.asp?tid=128

***
Thus, 35 U.S.C. § 102 (b) "contains several distinct bars to patentability, each of which relates to activity or disclosure more than one year prior to the date of the application. Two of these - the 'public use' and the 'on sale' objections - are sometimes considered together although it is quite clear that either may apply when the other does not." Dart Indus. v. E.I. du Pont de Nemours & Co., 489 F.2d 1359, 1365 (7th Cir. 1973). There may be a public use of an invention absent any sales activity. Likewise, there may be a nonpublic, e.g., "secret," sale or offer to sell an invention which nevertheless constitutes a statutory bar. Hobbs v. United States, 451 F.2d 849, 859-60 (5th Cir. 1971).
***

Further material is provided in the URL cited above.