It is well known that if an inventor sells an invention prior to applying for a patent application, the sale can preclude the inventor from obtaining a patent for the invention. In the United States, the inventor also gets a one-year grace period before the on-sale bar applies. In most other countries, the on-sale bar is absolute with no grace period.
Itis not so well-known that the on-sale bar can be triggered by the inventors' (or patent applicant's) own purchase of the inventionfrom its suppliers.In 2001, the Federal Circuit considered whether to establish a "supplier exception" to the on-sale bar and decided against such an exception. (Special Devices, Inc. v. OEA, Inc. 270 F.3d 1353, 1357 (Fed. Cir. 2001).)
More recently, in The Medicines Co. v. Hospira, Inc., 791 F.3d 1368, 1370 (Fed. Cir. 2015), the court again refused to grant a supplier exception and noted that the case at hand involved a situation where the supplier was manufacturing a product in preparation for commercial exploitation by the patent holder.
The"no supplier exception" rule may be ripe for change. After the patent holder filed a petition for rehearing, the Federal Circuit vacated its decision in the Medicines Co. case and asked the parties to submit new briefs in the case. Since then, the American Intellectual Property Law Association filed an amicus brief urging the court to rule that atransaction between an inventor and its supplier is not a commercial offer for sale, and therefore shouldnot trigger the on-sale bar to patentability.
The Federal Circuit should issue a new decision in the case during the first half of 2016. The court's willingness to entertain the rehearing petition suggests that it may be willing to retract, relax, or otherwise change itsrule that has stood since theSpecial Devices case.
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