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Federal Circuit orders district court to reconcile inconsistenciesJune 23, 2006

On June 22, the Federal Circuit vacated the Southern District of New York’s summary judgment ruling which held a patent for an inflatable decorative holiday figure invalid because it was on sale more than a year before the patent application was filed. The Federal Circuit found that there was a factual dispute as to whether the invention was ‘ready for patenting’ at the time of the sale.Under the patent statutes, if an invention is on sale more than a year before a patent application is filed for the invention, the inventors are barred from obtaining a patent. The Supreme Court stated that in order to be ‘on sale,’ there must have been (1) a commercial offer for sale for (2) an invention that is ready for patenting. In this case, the patent application was initially filed on January 9, 2002, so any activity that constituted a sale or offer for sale before January 9, 2001 would invalidate the patent. Because this case was decided on summary judgment, there must be no genuine issue as to the facts surrounding the invalidating sale or offer. Gemmy Industries began developing its inflatable figure in August 2000. By October 2000, Gemmy had created prototypes of the figure and exhibited them to potential customers in Hong Kong. At the exhibition, the prototypes were inflated from a long tube connected to a hair dryer, and quote sheets were handed out with estimated prices, measurements and weights. In the patent application (and the claims as allowed), the hair dryer was replaced with a fan unit as part of a base. The district court found that the October 2000 exhibit did not have a fan as required by the patent claims. Yet, the court still found there was no issue of material fact regarding the determination of the sale requirement, granting summary judgment. The Federal Circuit found the conclusion that the figures shown in 2000 did not have a fan base in direct conflict with the finding that the invention was on sale and vacated the judgment. This case reveals the Federal Circuit’s approach to the one-year grace period given to inventors in order to file their patents after an invention is placed on sale. In order for an invention sold more than a year in advance to be ‘ready for patenting,’ it must be the product claimed in the patent. To read the complete decision, log on to

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