Commercial Prior Art for Software Patents: When Claimed Methods Are on Sale

Vol. 5 No. 2

By

Michael Hawes is a partner at Baker Botts L.L.P. He assists individuals and companies who are resolving disputes over technology access and ownership, initiating technology-driven ventures, or forming technology-focused relationships. He frequently represents clients when software rights are contested in arbitrations, trials, and on appeal. He can be reached at michael.hawes@bakerbotts.com. Natalie Alfaro is an associate at Baker Botts L.L.P. She represents clients in patent litigation matters involving a variety of technologies, including mechanical and electrical devices, computer systems, and computer software. She can be reached at natalie.alfaro@bakerbotts.com.

Proving an “on sale” event as prior art in software patent cases can be challenging under current case law, especially where a software patent includes one or more claims directed at methods or processes performed or carried out by the software. The difficulty involves determining: (1) what constitutes a “commercial offer for sale” for purposes of the on-sale bar, including what exactly must be offered for sale or sold in order to invoke the on-sale bar; and (2) when such software or method is “ready for patenting.” Currently, there is a fine line between activities that will trigger an on-sale bar and those that will not—adding to the difficulty of establishing an “on sale” event. Even better, the America Invents Act will inject additional ambiguity into the current landscape of the on-sale bar once patents subject to the Act start issuing.

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