Historically, courts have applied a totality of the circumstances test to determine whether a public use or sale of an invention had taken place that would bar patentability under Section 102(b) of the Patent Act. The totality of the circumstances test is burdened by ambiguity and vagueness, which in turn leaves inventors with uncertainty as to which activities trigger the 102(b) bars. In 1998, however, the Supreme Court in Pfaff v. Wells Electronics, Inc., replaced the totality of the circumstances test as applied to the on-sale bar with a clearer, two-part test. In determining whether the on-sale bar applies, courts now use a two-part, ready-for-patenting test. An invention is considered "on sale" within the meaning of 102(b) if: (1) the invention has been the subject of a commercial sale or offer for sale; and (2) the invention is ready for patenting. The Pfaff test gives inventors more clarity by providing more definite guidelines as to what constitutes a sale under 102(b). However, the ambiguous and vague totality of the circumstances test is still applied by courts when determining public use under 102(b). Following the lead of Pfaff, this Note proposes that the totality of the circumstances test as applied to the public use bar be replaced by a clearer, two-part test. Under the proposed test, an invention is in "public use" when: (1) there is any nonexperimental use by or visible to someone other than the inventor or those under the inventor's direction; and (2) the invention has been reduced to practice. The test provides a more definite rule for determining whether an invalidating public use has occurred. This, in turn, allows inventors to conform their activities so as not to be barred from patentability under the 102(b) public use bar. The proposed test also seeks to provide a degree of uniformity in cases dealing with the public use bar.
Margaret L. Begalle,
Eliminating the Totality of the Circumstances Test for the Public Use Bar under Section 102(B) of the Patent Act,
Chi.-Kent L. Rev.
Available at: https://scholarship.kentlaw.iit.edu/cklawreview/vol77/iss3/11