The On-Sale Bar and the New UCC Article 2: Arguments for Defining a Commercial Offer for Sale Pursuant to the United Nations Convention on Contracts for the International Sale of Goods

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Volume 5, Issue 2 (Jun 2012)

The modern inventor is compelled to create innovative products, generate a market for those products, and protect those products with a patent. The choice to file a patent application reflects an inventor’s desire to protect her private interest in controlling a limited monopoly over the invention, subject to the statutes governing patents. Section 102 of the 1952 Patent Act attempts to balance such private interests with the goal of increasing the pool of public knowledge. Specifically, § 102 states “[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.” This particular provision of the Patent Act is known as the “on-sale bar.” The Supreme Court in Pfaff v. Wells Electronics, Inc. stated that the critical date for the on-sale bar is triggered when the invention is both ready for patenting and the “subject of a commercial offer for sale.” Appearing simple on its surface, § 102 can be the source of deep and complex inquiry into what actions constitute a “commercial offer for sale.” In 2001, the Court of Appeals for the Federal Circuit (“Federal Circuit”) attempted to simplify this inquiry by holding that courts should look to Article 2 of the Uniform Commercial Code (“UCC”) to determine whether a commercial offer for sale has occurred.

On May 13, 2003, the American Law Institute (“ALI”), authors of the UCC, finalized its revisions of UCC Article 2. Faced with two versions of Article 2, the Federal Circuit eventually will be forced to decide whether to rely on the new version of Article 2 or continue to use the older version of Article 2. This comment will argue that instead of relying on either version of Article 2, the Federal Circuit should look to the United Nations Convention on Contracts for the International Sale of Goods (“CISG”)8 to determine whether a commercial offer for sale has occurred in actions under § 102(b).

Matthew Jamison, Article, The On-Sale Bar and the New UCC Article 2: Arguments for Defining a Commercial Offer for Sale Pursuant to the United Nations Convention on Contracts for the International Sale of Goods, 5 N.C. J.L. & Tech. 351 (2004), available at http://ncjolt.org/wp-content/uploads/2016/09/20_5NCJLTech3512003-2004.pdf.

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