Liability for the "Threat of a Sale": Assessing Patent Infringement for Offering to Sell an Invention and Implications for the On-Sale Patentability Bar and Other Forms of Infringement

In order to comport with our obligations under the Agreement Trade Related Aspects of Intellectual Property (TRIPS), Congress made it an act of infringement to to patented invention. Prior to TRIPS, party could infringe patent under 35 U.S.C. § 271(a) only by making, using, or selling patented invention without the permission of the patent owner. Whereas previously a threat of [did] not constitute an act of now party who simply to sell device covered by patent is liable as an infringer, even if the is never completed. In adopting this new form of infringement, however, Congress provided virtually no guidance as to its meaning. Neither courts nor commentators have written about this new version of infringement. This article examines the history of 35 U.S.C. § 271 and what is considered to be infringement of patent. It then assesses what the proper standard for an “offer” should be under this new provision. After reviewing the current case law this issue as determined by the U.S. Court of Appeals for the Federal Circuit, the article considers three sources of authority to assess the appropriate standard for to infringement. First, infringement for offers to is compared and contrasted with the statutory proscription of obtaining patent device that has been on sale under 35 U.S.C. § 102(b). Second, because § 271(a) was amended to harmonize U.S. law with international law, the article also compares interpretations of to sell and sales in foreign jurisdictions, specifically the United Kingdom and Canada. Third, the article analyzes the economic consequences of an infringing offer to sell to determine whether the Federal Circuit's standard for an to adequately redresses the pecuniary harm to the patentee caused by this infringing activity. After evaluating these sources, Part III concludes that general commercialization standard would best effectuate the objectives of both the on-sale bar and to infringement. Finally, the article then addresses whether complete, physical embodiment of an invention should be required for an infringing to sell. Historically, for there to be infringement, the allegedly infringing device had to be in physically complete form. The article suggests that the addition of to as form of infringement challenges this norm, not only for to sell but also for completed sales of patented device. While requirement that the invention be in its complete and assembled form is appropriate in determining whether an infringer has made, used, or imported an invention, such standard is inappropriate for sales of, and to sell, an infringing device. Instead, drawings or models should be sufficient for to sell and actual sales, so long as person of ordinary skill in the relevant art would be able to read such drawings and readily build the device.

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