Thinking of patenting, but waiting for some customers first?
Tread carefully. By merely offering your invention for sale,
even if the invention has not even been manufactured, you may
lose patent rights.
The recent US case of Hamliton Beach v. Sunbeam
Products Inc. (Case No. 11-CV-0345, Decided:
August 14, 2013) dealt with a challenge to Hamilton Beach's
patent for a slow-cooker design. The critical event was
a transaction between Hamilton Beach and a foreign supplier in
early 2005. The offer occurred before the patent
filing date - to be specific, it occurred more than 1 year before
the filing date. This offer by Hamilton Beach was considered
by the court to be an offer for sale of a product that anticipated
the asserted claims and the court found that the invention
was ready for patenting prior to the relevant date. The court noted
that "An actual sale is not required for the activity to be an
invalidating commercial offer for sale... An attempt to sell is
sufficient so long as it is 'sufficiently definite that another
party could make a binding contract by simple
As a result, the patent was held to be invalid.
If such a sale or even an offer for sale is made when
the invention is ready for patenting, that will start the 1 year
clock running for patent filing in Canada and the US. The inventor
would have 1-year from that date in which to file a
This may result in a loss of patent rights outside Canada and
the US, for countries in which there is no 1-year grace
An invention is "ready for patenting" when prior to
the critical date:
The invention is reduced to practice; or
The invention is depicted in drawings or described in writings
of sufficient nature to enable a person of ordinary skill in the
art to practice the invention.
In Canada, the courts have come to similar conclusions -
consider this case dealing with a device that
was manufactured and rented to a third party for use in drilling an
oil well in Texas prior to the relevant date of the Canadian
patent. This earlier device invalidated the patent, since it
constituted an "enabling disclosure" of the invention
more than 12 months prior to filing of the patent application.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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