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OCTOBER TERM, 1998 55
Syllabus
PFAFF v. WELLS ELECTRONICS, INC.
certiorari to the united states court of appeals for
the federal circuit
No. 97–1130. Argued October 6, 1998—Decided November 10, 1998
Under § 102(b) of the Patent Act of 1952, no one can patent an “invention”
that has been “on sale” more than one year before filing a patent appli-
cation. In early 1981, petitioner Pfaff designed a new computer chip
socket and sent detailed engineering drawings of the socket to a man-
ufacturer. He also showed a sketch of his concept to representatives of
Texas Instruments, which placed an order for the new sockets prior to
April 8, 1981. In accord with his normal practice, Pfaff did not make
and test a prototype before offering to sell the socket in commercial
quantities. He filled the order in July 1981, and thus the evidence indi-
cates that he first reduced his invention to practice that summer. He
applied for a patent on April 19, 1982, making April 19, 1981, the critical
date for § 102(b)’s on-sale bar. After the patent issued, he lost an in-
fringement action he filed against respondent, Wells Electronics, Inc.
Subsequently, he brought this suit, alleging that a modified version of
Wells’ socket infringed six of his patent’s claims. The District Court
held, inter alia, that three of the claims were infringed, rejecting Wells’
§ 102(b) defense on the ground that Pfaff had filed the patent application
less than a year after reducing the invention to practice. In reversing,
the Court of Appeals concluded, among other things, that § 102(b)’s
1-year period began to run when the invention was offered for sale com-
mercially, not when it was reduced to practice.
Held: Pfaff ’s patent is invalid because the invention had been on sale for
more than one year in this country before he filed his patent applica-
tion. Pp. 60–69.
(a) The primary meaning of “invention” in the Patent Act unques-
tionably refers to the inventor’s conception rather than to a physical
embodiment of that idea. The statute contains no express “reduction
to practice” requirement, see §§ 100, 101, 102(g), and it is well settled
that an invention may be patented before it is reduced to practice. In
The Telephone Cases, 126 U. S. 1, 535–536, this Court upheld a patent
issued to Alexander Graham Bell even though he had filed his applica-
tion before constructing a working telephone. Applying the reasoning
of The Telephone Cases to the facts of this case, it is evident that Pfaff
could have obtained a patent when he accepted Texas Instruments’
order, for at that time he provided the manufacturer with a description
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56 PFAFF v. WELLS ELECTRONICS, INC.
Syllabus
and drawings of “sufficient clearness and precision to enable those
skilled in the matter” to produce the device, id., at 536. Pp. 60–63.
(b) Pfaff ’s nontextual argument—that longstanding precedent, but-
tressed by the interest in providing inventors with a clear standard
identifying the onset of the 1-year period, justifies a special interpreta-
tion of “invention” in § 102(b)—is rejected. While reduction to practice
provides sufficient evidence that an invention is complete, the facts of
The Telephone Cases and this case show that such proof is not necessary
in every case. Pp. 63–66.
(c) The on-sale bar applies when two conditions are satisfied before
the critical date. First, the product must be the subject of a commer-
cial offer for sale. Here, the acceptance of the purchase order prior to
April 8, 1981, makes it clear that such an offer had been made, and there
is no question that the sale was commercial. Second, the invention
must be ready for patenting. That condition may be satisfied in at
least two ways: by proof of reduction to practice before the critical
date; or by proof that prior to the critical date the inventor had pre-
pared drawings or other descriptions of the invention that were suf-
ficiently specific to enable a person skilled in the art to practice the
invention. This condition is satisfied here because the drawings sent to
the manufacturer before the critical date fully disclosed the invention.
Pp. 67–69.
124 F. 3d 1429, affirmed.
Stevens, J., delivered the opinion for a unanimous Court.
Jerry R. Selinger argued the cause for petitioner. With
him on the briefs were Susan E. Powley and Jack A. Kanz.
C. Randall Bain argued the cause for respondent. With
him on the brief were Alan H. Blankenheimer, Patricia A.
Hubbard, C. Mark Kittredge, and James D. Hall.
Jeffrey P. Minear argued the cause for the United States
as amicus curiae urging affirmance. With him on the brief
were Solicitor General Waxman, Assistant Attorneys Gen-
eral Hunger and Klein, Deputy Solicitor General Wallace,
William Kanter, Alfred Mollin, David Siedman, Mark S.
Popofsky, Nancy J. Linck, and Albin F. Drost.*
*Briefs of amici curiae urging reversal were filed for Global Gaming
Technology, Inc., by Joseph M. Vanek; for the American Intellectual Prop-
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Cite as: 525 U. S. 55 (1998) 57
Opinion of the Court
Justice Stevens delivered the opinion of the Court.
Section 102(b) of the Patent Act of 1952 provides that no
person is entitled to patent an “invention” that has been “on
sale” more than one year before filing a patent application.1
We granted certiorari to determine whether the commercial
marketing of a newly invented product may mark the begin-
ning of the 1-year period even though the invention has not
yet been reduced to practice.2
I
On April 19, 1982, petitioner, Wayne Pfaff, filed an appli-
cation for a patent on a computer chip socket. Therefore,
April 19, 1981, constitutes the critical date for purposes
of the on-sale bar of 35 U. S. C. § 102(b); if the 1-year period
erty Law Association by Robert H. Fischer, Gary L. Griswold, Robert
L. Baechtold, and J. Michael Jakes; for the Federal Circuit Bar Asso-
ciation by George E. Hutchinson, Denise W. DeFranco, and James F.
McKeown.
Briefs of amici curiae urging affirmance were filed for View Engineer-
ing, Inc., by Ernie L. Brooks and Frank A. Angileri; for the Dallas-Fort
Worth Intellectual Property Law Association by D. Scott Hemingway and
Louis Touton; for the Mas-Hamilton Group by David E. Schmit; and for
the Patent, Trademark & Copyright Section of the Bar Association of the
District of Columbia by Bruce T. Wieder.
1
“A person shall be entitled to a patent unless—
. . . . .
“(b) the invention was patented or described in a printed publication in
this or a foreign country or in public use or on sale in this country, more
than one year prior to the date of the application for patent in the United
States, or . . . .” 35 U. S. C. § 102.
2
“A process is reduced to practice when it is successfully performed. A
machine is reduced to practice when it is assembled, adjusted and used.
A manufacture is reduced to practice when it is completely manufactured.
A composition of matter is reduced to practice when it is completely com-
posed.” Corona Cord Tire Co. v. Dovan Chemical Corp., 276 U. S. 358,
383 (1928).
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58 PFAFF v. WELLS ELECTRONICS, INC.
Opinion of the Court
began to run before that date, Pfaff lost his right to patent
his invention.
Pfaff commenced work on the socket in November 1980,
when representatives of Texas Instruments asked him to
develop a new device for mounting and removing semicon-
ductor chip carriers. In response to this request, he pre-
pared detailed engineering drawings that described the de-
sign, the dimensions, and the materials to be used in making
the socket. Pfaff sent those drawings to a manufacturer in
February or March 1981.
Prior to March 17, 1981, Pfaff showed a sketch of his con-
cept to representatives of Texas Instruments. On April 8,
1981, they provided Pfaff with a written confirmation of a
previously placed oral purchase order for 30,100 of his new
sockets for a total price of $91,155. In accord with his
normal practice, Pfaff did not make and test a prototype
of the new device before offering to sell it in commercial
quantities.3
The manufacturer took several months to develop the cus-
tomized tooling necessary to produce the device, and Pfaff
did not fill the order until July 1981. The evidence therefore
indicates that Pfaff first reduced his invention to practice in
the summer of 1981. The socket achieved substantial com-
3
At his deposition, respondent’s counsel engaged in the following collo-
quy with Pfaff:
“Q. Now, at this time [late 1980 or early 1981] did we [sic] have any
prototypes developed or anything of that nature, working embodiment?
“A. No.
“Q. It was in a drawing. Is that correct?
“A. Strictly in a drawing. Went from the drawing to the hard tooling.
That’s the way I do my business.
“Q. ‘Boom-boom’?
“A. You got it.
“Q. You are satisfied, obviously, when you come up with some drawings
that it is going to go—‘it works’?
“A. I know what I’m doing, yes, most of the time.” App. 96–97.
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Opinion of the Court
mercial success before Patent No. 4,491,377 (’377 patent)
issued to Pfaff on January 1, 1985.4
After the patent issued, petitioner brought an infringe-
ment action against respondent, Wells Electronics, Inc., the
manufacturer of a competing socket. Wells prevailed on
the basis of a finding of no infringement.5 When respond-
ent began to market a modified device, petitioner brought
this suit, alleging that the modifications infringed six of the
claims in the ’377 patent.
After a full evidentiary hearing before a Special Master,6
the District Court held that two of those claims (1 and 6)
were invalid because they had been anticipated in the prior
art. Nevertheless, the court concluded that four other
claims (7, 10, 11, and 19) were valid and three (7, 10, and 11)
were infringed by various models of respondent’s sockets.
App. to Pet. for Cert. 21a–22a. Adopting the Special Mas-
ter’s findings, the District Court rejected respondent’s
§ 102(b) defense because Pfaff had filed the application for
the ’377 patent less than a year after reducing the invention
to practice.
The Court of Appeals reversed, finding all six claims in-
valid. 124 F. 3d 1429 (CA Fed. 1997). Four of the claims (1,
6, 7, and 10) described the socket that Pfaff had sold to Texas
Instruments prior to April 8, 1981. Because that device had
been offered for sale on a commercial basis more than one
4
Initial sales of the patented device were:
1981......................................................................................................... $ 350,000
1982......................................................................................................... $ 937,000
1983......................................................................................................... $2,800,000
1984......................................................................................................... $3,430,000
App. to Pet. for Cert. 223a.
5
Pfaff v. Wells Electronics, Inc., 9 USPQ 2d 1366 (ND Ind. 1988). The
court found that the Wells device did not literally infringe on Pfaff ’s ’377
patent based on the physical location of the sockets’ conductive pins.
6
Initially the District Court entered summary judgment in favor of
respondent, but the Court of Appeals reversed and remanded for trial
because issues of fact were in dispute. See 5 F. 3d 514 (CA Fed. 1993).
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60 PFAFF v. WELLS ELECTRONICS, INC.
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year before the patent application was filed on April 19, 1982,
the court concluded that those claims were invalid under
§ 102(b). That conclusion rested on the court’s view that as
long as the invention was “substantially complete at the time
of sale,” the 1-year period began to run, even though the
invention had not yet been reduced to practice. Id., at 1434.
The other two claims (11 and 19) described a feature that
had not been included in Pfaff ’s initial design, but the Court
of Appeals concluded as a matter of law that the additional
feature was not itself patentable because it was an obvious
addition to the prior art.7 Given the court’s § 102(b) holding,
the prior art included Pfaff ’s first four claims.
Because other courts have held or assumed that an inven-
tion cannot be “on sale” within the meaning of § 102(b) unless
and until it has been reduced to practice, see, e. g., Timely
Products Corp. v. Arron, 523 F. 2d 288, 299–302 (CA2 1975);
Dart Industries, Inc. v. E. I. Du Pont de Nemours & Co., 489
F. 2d 1359, 1365, n. 11 (CA7 1973), cert. denied, 417 U. S.
933 (1974), and because the text of § 102(b) makes no refer-
ence to “substantial completion” of an invention, we granted
certiorari. 523 U. S. 1003 (1998).
II
The primary meaning of the word “invention” in the Pat-
ent Act unquestionably refers to the inventor’s conception
rather than to a physical embodiment of that idea. The stat-
ute does not contain any express requirement that an inven-
tion must be reduced to practice before it can be patented.
7
Title 35 U. S. C. § 103 provides: “A patent may not be obtained though
the invention is not identically disclosed or described . . . if the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at the
time the invention was made to a person having ordinary skill in the art
to which said subject matter pertains.”
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Neither the statutory definition of the term in § 100 8 nor the
basic conditions for obtaining a patent set forth in § 101 9
make any mention of “reduction to practice.” The statute’s
only specific reference to that term is found in § 102(g), which
sets forth the standard for resolving priority contests be-
tween two competing claimants to a patent. That subsec-
tion provides:
“In determining priority of invention there shall be con-
sidered not only the respective dates of conception and
reduction to practice of the invention, but also the rea-
sonable diligence of one who was first to conceive and
last to reduce to practice, from a time prior to concep-
tion by the other.”
Thus, assuming diligence on the part of the applicant, it is
normally the first inventor to conceive, rather than the first
to reduce to practice, who establishes the right to the patent.
It is well settled that an invention may be patented before
it is reduced to practice. In 1888, this Court upheld a patent
issued to Alexander Graham Bell even though he had filed
his application before constructing a working telephone.
Chief Justice Waite’s reasoning in that case merits quoting
at length:
“It is quite true that when Bell applied for his patent
he had never actually transmitted telegraphically spo-
ken words so that they could be distinctly heard and
understood at the receiving end of his line, but in his
specification he did describe accurately and with ad-
mirable clearness his process, that is to say, the exact
8
Title 35 U. S. C. § 100, “Definitions,” states:
“When used in this title unless the context otherwise indicates—
“(a) The term ‘invention’ means invention or discovery. . . .”
9
Section 101, “Inventions patentable,” provides: “Whoever invents or
discovers any new and useful process, machine, manufacture, or composi-
tion of matter, or any new and useful improvement thereof, may obtain a
patent therefor, subject to the conditions and requirements of this title.”
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62 PFAFF v. WELLS ELECTRONICS, INC.
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electrical condition that must be created to accomplish
his purpose, and he also described, with sufficient preci-
sion to enable one of ordinary skill in such matters to
make it, a form of apparatus which, if used in the way
pointed out, would produce the required effect, receive
the words, and carry them to and deliver them at the
appointed place. The particular instrument which he
had, and which he used in his experiments, did not,
under the circumstances in which it was tried, repro-
duce the words spoken, so that they could be clearly
understood, but the proof is abundant and of the most
convincing character, that other instruments, carefully
constructed and made exactly in accordance with the
specification, without any additions whatever, have op-
erated and will operate successfully. A good mechanic
of proper skill in matters of the kind can take the patent
and, by following the specification strictly, can, without
more, construct an apparatus which, when used in the
way pointed out, will do all that it is claimed the method
or process will do . . . .
“The law does not require that a discoverer or inven-
tor, in order to get a patent for a process, must have
succeeded in bringing his art to the highest degree of
perfection. It is enough if he describes his method with
sufficient clearness and precision to enable those skilled
in the matter to understand what the process is, and
if he points out some practicable way of putting it into
operation.” The Telephone Cases, 126 U. S. 1, 535–536
(1888).10
When we apply the reasoning of The Telephone Cases to
the facts of the case before us today, it is evident that Pfaff
10
This Court has also held a patent invalid because the invention had
previously been disclosed in a prior patent application, although that ap-
plication did not claim the invention and the first invention apparently
had not been reduced to practice. Alexander Milburn Co. v. Davis-
Bournonville Co., 270 U. S. 390, 401–402 (1926).
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could have obtained a patent on his novel socket when he
accepted the purchase order from Texas Instruments for
30,100 units. At that time he provided the manufacturer
with a description and drawings that had “sufficient clear-
ness and precision to enable those skilled in the matter” to
produce the device. Id., at 536. The parties agree that the
sockets manufactured to fill that order embody Pfaff ’s con-
ception as set forth in claims 1, 6, 7, and 10 of the ’377 patent.
We can find no basis in the text of § 102(b) or in the facts of
this case for concluding that Pfaff ’s invention was not “on
sale” within the meaning of the statute until after it had
been reduced to practice.
III
Pfaff nevertheless argues that longstanding precedent,
buttressed by the strong interest in providing inventors with
a clear standard identifying the onset of the 1-year period,
justifies a special interpretation of the word “invention” as
used in § 102(b). We are persuaded that this nontextual
argument should be rejected.
As we have often explained, most recently in Bonito
Boats, Inc. v. Thunder Craft Boats, Inc., 489 U. S. 141, 151
(1989), the patent system represents a carefully crafted bar-
gain that encourages both the creation and the public dis-
closure of new and useful advances in technology, in return
for an exclusive monopoly for a limited period of time. The
balance between the interest in motivating innovation and
enlightenment by rewarding invention with patent protec-
tion on the one hand, and the interest in avoiding monopolies
that unnecessarily stifle competition on the other, has been
a feature of the federal patent laws since their inception.
As this Court explained in 1871:
“Letters patent are not to be regarded as monopolies . . .
but as public franchises granted to the inventors of new
and useful improvements for the purpose of securing to
them, as such inventors, for the limited term therein
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64 PFAFF v. WELLS ELECTRONICS, INC.
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mentioned, the exclusive right and liberty to make and
use and vend to others to be used their own inventions,
as tending to promote the progress of science and the
useful arts, and as matter of compensation to the in-
ventors for their labor, toil, and expense in making the
inventions, and reducing the same to practice for the
public benefit, as contemplated by the Constitution and
sanctioned by the laws of Congress.” Seymour v. Os-
borne, 11 Wall. 516, 533–534.
Consistent with these ends, § 102 of the Patent Act serves
as a limiting provision, both excluding ideas that are in the
public domain from patent protection and confining the du-
ration of the monopoly to the statutory term. See, e. g.,
Frantz Mfg. Co. v. Phenix Mfg. Co., 457 F. 2d 314, 320 (CA7
1972).
We originally held that an inventor loses his right to a
patent if he puts his invention into public use before filing
a patent application. “His voluntary act or acquiescence
in the public sale and use is an abandonment of his right.”
Pennock v. Dialogue, 2 Pet. 1, 24 (1829) (Story, J.). A simi-
lar reluctance to allow an inventor to remove existing knowl-
edge from public use undergirds the on-sale bar.
Nevertheless, an inventor who seeks to perfect his discov-
ery may conduct extensive testing without losing his right
to obtain a patent for his invention—even if such testing
occurs in the public eye. The law has long recognized the
distinction between inventions put to experimental use and
products sold commercially. In 1878, we explained why pat-
entability may turn on an inventor’s use of his product.
“It is sometimes said that an inventor acquires an undue
advantage over the public by delaying to take out a pat-
ent, inasmuch as he thereby preserves the monopoly to
himself for a longer period than is allowed by the policy
of the law; but this cannot be said with justice when the
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delay is occasioned by a bona fide effort to bring his
invention to perfection, or to ascertain whether it will
answer the purpose intended. His monopoly only con-
tinues for the allotted period, in any event; and it is the
interest of the public, as well as himself, that the in-
vention should be perfect and properly tested, before
a patent is granted for it. Any attempt to use it for a
profit, and not by way of experiment, for a longer pe-
riod than two years before the application, would de-
prive the inventor of his right to a patent.” Elizabeth
v. Pavement Co., 97 U. S. 126, 137 (emphasis added).
The patent laws therefore seek both to protect the public’s
right to retain knowledge already in the public domain and
the inventor’s right to control whether and when he may
patent his invention. The Patent Act of 1836, 5 Stat. 117,
was the first statute that expressly included an on-sale bar
to the issuance of a patent. Like the earlier holding in Pen-
nock, that provision precluded patentability if the invention
had been placed on sale at any time before the patent ap-
plication was filed. In 1839, Congress ameliorated that re-
quirement by enacting a 2-year grace period in which the
inventor could file an application. 5 Stat. 353.
In Andrews v. Hovey, 123 U. S. 267, 274 (1887), we noted
that the purpose of that amendment was “to fix a period of
limitation which should be certain”; it required the inventor
to make sure that a patent application was filed “within two
years from the completion of his invention,” ibid. In 1939,
Congress reduced the grace period from two years to one
year. 53 Stat. 1212.
Petitioner correctly argues that these provisions identify
an interest in providing inventors with a definite standard
for determining when a patent application must be filed. A
rule that makes the timeliness of an application depend on
the date when an invention is “substantially complete” se-
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66 PFAFF v. WELLS ELECTRONICS, INC.
Opinion of the Court
riously undermines the interest in certainty.11 Moreover,
such a rule finds no support in the text of the statute. Thus,
petitioner’s argument calls into question the standard ap-
plied by the Court of Appeals, but it does not persuade us
that it is necessary to engraft a reduction to practice element
into the meaning of the term “invention” as used in § 102(b).
The word “invention” must refer to a concept that is com-
plete, rather than merely one that is “substantially com-
plete.” It is true that reduction to practice ordinarily pro-
vides the best evidence that an invention is complete. But
just because reduction to practice is sufficient evidence of
completion, it does not follow that proof of reduction to prac-
tice is necessary in every case. Indeed, both the facts of
The Telephone Cases and the facts of this case demonstrate
that one can prove that an invention is complete and ready
for patenting before it has actually been reduced to
practice.12
11
The Federal Circuit has developed a multifactor, “totality of the cir-
cumstances” test to determine the trigger for the on-sale bar. See, e. g.,
Micro Chemical, Inc. v. Great Plains Chemical Co., 103 F. 3d 1538, 1544
(1997) (stating that, in determining whether an invention is on sale for
purposes of § 102(b), “ ‘all of the circumstances surrounding the sale or
offer to sell, including the stage of development of the invention and the
nature of the invention, must be considered and weighed against the poli-
cies underlying section 102(b)’ ”); see also UMC Electronics Co. v. United
States, 816 F. 2d 647, 656 (1987) (stating the on-sale bar “does not lend
itself to formulation into a set of precise requirements”). As the Federal
Circuit itself has noted, this test “has been criticized as unnecessarily
vague.” Seal-Flex, Inc. v. Athletic Track & Court Construction, 98 F. 3d
1318, 1323, n. 2 (1996).
12
Several of this Court’s early decisions stating that an invention is not
complete until it has been reduced to practice are best understood as in-
dicating that the invention’s reduction to practice demonstrated that the
concept was no longer in an experimental phase. See, e. g., Seymour v.
Osborne, 11 Wall. 516, 552 (1871) (“Crude and imperfect experiments are
not sufficient to confer a right to a patent; but in order to constitute an
invention, the party must have proceeded so far as to have reduced his
idea to practice, and embodied it in some distinct form”); Clark Thread
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Opinion of the Court
We conclude, therefore, that 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. An inventor can both understand and control
the timing of the first commercial marketing of his invention.
The experimental use doctrine, for example, has not gen-
erated concerns about indefiniteness,13 and we perceive no
reason why unmanageable uncertainty should attend a rule
that measures the application of the on-sale bar of § 102(b)
against the date when an invention that is ready for patent-
ing is first marketed commercially. In this case the accept-
ance of the purchase order prior to April 8, 1981, makes it
clear that such an offer had been made, and there is no ques-
tion that the sale was commercial rather than experimental
in character.
Second, the invention must be ready for patenting. That
condition may be satisfied in at least two ways: by proof of
reduction to practice before the critical date; or by proof
that prior to the critical date the inventor had prepared
drawings or other descriptions of the invention that were
sufficiently specific to enable a person skilled in the art to
Co. v. Willimantic Linen Co., 140 U. S. 481, 489 (1891) (describing how
inventor continued to alter his thread winding machine until July 1858,
when “he put it in visible form in the shape of a machine. . . . It is evident
that the invention was not completed until the construction of the
machine”); Corona Cord Tire Co. v. Dovan Chemical Corp., 276 U. S., at
382–383 (stating that an invention did not need to be subsequently com-
mercialized to constitute prior art after the inventor had finished his
experimentation. “It was the fact that it would work with great activity
as an accelerator that was the discovery, and that was all, and the neces-
sary reduction to use is shown by instances making clear that it did so
work, and was a completed discovery”).
13
See, e. g., Rooklidge & Jensen, Common Sense, Simplicity and Experi-
mental Use Negation of the Public Use and On Sale Bars to Patentability,
29 John Marshall L. Rev. 1, 29 (1995) (stating that “whether a particular
activity is experimental is often clear”).
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68 PFAFF v. WELLS ELECTRONICS, INC.
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practice the invention.14 In this case the second condition
of the on-sale bar is satisfied because the drawings Pfaff sent
to the manufacturer before the critical date fully disclosed
the invention.
The evidence in this case thus fulfills the two essential
conditions of the on-sale bar. As succinctly stated by
Learned Hand:
“[I]t is a condition upon an inventor’s right to a patent
that he shall not exploit his discovery competitively
after it is ready for patenting; he must content himself
with either secrecy, or legal monopoly.” Metallizing
Engineering Co. v. Kenyon Bearing & Auto Parts Co.,
153 F. 2d 516, 520 (CA2 1946).
The judgment of the Court of Appeals finds support not
only in the text of the statute but also in the basic policies
underlying the statutory scheme, including § 102(b). When
Pfaff accepted the purchase order for his new sockets prior
to April 8, 1981, his invention was ready for patenting. The
fact that the manufacturer was able to produce the socket
using his detailed drawings and specifications demonstrates
this fact. Furthermore, those sockets contained all the ele-
ments of the invention claimed in the ’377 patent. There-
fore, Pfaff ’s ’377 patent is invalid because the invention had
14
The Solicitor General has argued that the rule governing the on-sale
bar should be phrased somewhat differently. In his opinion, “if the sale
or offer in question embodies the invention for which a patent is later
sought, a sale or offer to sell that is primarily for commercial purposes
and that occurs more than one year before the application renders the
invention unpatentable. Seal-Flex, Inc. v. Athletic Track and Court
Constr., 98 F. 3d 1318, 1325 (Fed. Cir. 1996) (Bryson, J., concurring in part
and concurring in the result).” Brief for United States as Amicus Curiae
10–11 (internal quotation marks omitted). It is true that evidence satisfy-
ing this test might be sufficient to prove that the invention was ready for
patenting at the time of the sale if it is clear that no aspect of the invention
was developed after the critical date. However, the possibility of addi-
tional development after the offer for sale in these circumstances counsels
against adoption of the rule proposed by the Solicitor General.
525US1 Unit: $$U3 [10-23-00 11:16:16] PAGES PGT: OPIN
Cite as: 525 U. S. 55 (1998) 69
Opinion of the Court
been on sale for more than one year in this country before
he filed his patent application. Accordingly, the judgment
of the Court of Appeals is affirmed.
It is so ordered.
