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Keywords

statuteappealpatenttrademark

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In re Kollar, 286 F.3d 1326, 62 U.S.P.Q.2d 1425

Facts

Issue

Rule

The two-prong test for the on-sale bar requires that (1) the product must be the subject of a commercial offer for sale, and (2) the invention must be ready for patenting. The Patent and Trademark Office (PTO) bears the burden of proving that the claimed invention was on sale within the meaning of the statute, and whether an invention is 'on sale' is a question of law based on factual findings.

Analysis

The court analyzed the Celanese Agreement and concluded that it did not constitute a sale because it was primarily a licensing agreement aimed at research and development rather than a commercial offer for sale. The agreement did not indicate that a product of the claimed process was actually offered for sale, and the court emphasized that merely granting a license does not trigger the on-sale bar. The court distinguished between a process and a tangible item, noting that a process must be performed to be considered sold.

Conclusion

We hold only that licensing the invention, under which development of the claimed process would have to occur before the process is successfully commercialized, is not such a sale. Kollar III.

Who won?

John Kollar prevailed in this appeal as the court found that the Board erred in its determination that the licensing agreement constituted a sale under the on-sale bar. The court clarified that the agreement was primarily for research and development purposes and did not involve a commercial offer for sale of the claimed process. This ruling allowed Kollar to maintain his patent application without the on-sale bar hindrance.

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