Publications | 01/14/2014

Outsourcing Manufacturing and the Pre-AIA On-Sale Bar

Team Contact: Sangeeta Shah

  • Patent Prosecution

SOUTHFIELD, Mich. – Sangeeta G. Shah, Shareholder and Chief Diversity Officer at Brooks Kushman, discusses the on-sale doctrine under the America Invents Act (AIA). Pre-AIA, the on-sale bar was triggered when an invention ready for patenting was the subject of a commercial offer for sale. According to Shah, while the on-sale grace period exists in § 102 of the AIA, the modified language and its impact on the on-sale doctrine is unclear for now.

Using a recent Federal Circuit case, she explains that requesting a supplier to build a product before applying for a patent may trigger the on-sale bar, even if that product is for internal use only. As a result, the invention may no longer be patentable. Shah also explains that a company may avoid the on-sale bar by filing a parent application before approaching suppliers, or by tracking bar activities and dates when a patent application has been delayed.

Click here to read “Outsourcing Manufacturing and the Pre-AIA On-Sale Bar” by Sangeeta Shah.

About Brooks Kushman:

Brooks Kushman P.C. is a leading intellectual property (IP) and technology law firm with offices across the nation, representing clients nationally and internationally. The firm has more than 90 intellectual property professionals specializing in various technical disciplines. Brooks Kushman has a reputation for providing leading IP strategy and counseling with a focus on the business objectives of its clients and represents clients across many industries with respect to protection, enforcement and monetization of IP, including patents, trademarks, copyright and trade secrets.

Brooks Kushman counts a number of Fortune 100 companies across a variety of industries among its clients. The firm is recognized by a number of leading legal publications and rankings, including Corporate Counsel magazine, U.S. News & World Report, IP Law & Business magazine and the organization. For more information, please visit

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