In re Mahurkar: The Federal Circuit's Misapplied Focus on Commercialization in "On Sale" Bar Analysis

Authors

Hugh H. Matsubayashi

Abstract

In In re Mahurkar Double Lumen Hemodialysis Catheter Patent Litigation, the Federal Circuit held that a "sham" sale of an invention did not implicate the statutory "on sale" bar, which makes unpatentable any invention placed on sale more than one year prior to the filing of a patent application. This Note analyzes the Mahurkar decision's focus on the lack of commercialization of the invention in finding that a valid U.C.C. sale of an invention already reduced to practice does not implicate the "on sale" bar. It argues that under traditional "on sale" bar standards, a commercialization analysis is only necessary for the purposes of determining the degree of development of the invention and whether the sale was for experimentation purposes. It concludes by highlighting the inconsistency the Federal Circuit has created with this newly-developed emphasis on commercialization, necessitating a clarification of the policies and guidelines for proper application of the "on sale" bar.

First Page

267

Recommended Citation

Hugh H. Matsubayashi, Notes and Comments, In re Mahurkar: The Federal Circuit's Misapplied Focus on Commercialization in "On Sale" Bar Analysis, 72 Wash. L. Rev. 267 (1997).
Available at: https://digitalcommons.law.uw.edu/wlr/vol72/iss1/11