Pfaff v. Wells Electronics, Inc., 525 U.S. 55, 6 (1998)

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60

PFAFF v. WELLS ELECTRONICS, INC.

Opinion of the Court

year before the patent application was filed on April 19, 1982, the court concluded that those claims were invalid under § 102(b). That conclusion rested on the court's view that as long as the invention was "substantially complete at the time of sale," the 1-year period began to run, even though the invention had not yet been reduced to practice. Id., at 1434. The other two claims (11 and 19) described a feature that had not been included in Pfaff's initial design, but the Court of Appeals concluded as a matter of law that the additional feature was not itself patentable because it was an obvious addition to the prior art.7 Given the court's § 102(b) holding, the prior art included Pfaff's first four claims.

Because other courts have held or assumed that an invention cannot be "on sale" within the meaning of § 102(b) unless and until it has been reduced to practice, see, e. g., Timely Products Corp. v. Arron, 523 F. 2d 288, 299-302 (CA2 1975); Dart Industries, Inc. v. E. I. Du Pont de Nemours & Co., 489 F. 2d 1359, 1365, n. 11 (CA7 1973), cert. denied, 417 U. S. 933 (1974), and because the text of § 102(b) makes no reference to "substantial completion" of an invention, we granted certiorari. 523 U. S. 1003 (1998).

II

The primary meaning of the word "invention" in the Patent Act unquestionably refers to the inventor's conception rather than to a physical embodiment of that idea. The statute does not contain any express requirement that an invention must be reduced to practice before it can be patented.

7 Title 35 U. S. C. § 103 provides: "A patent may not be obtained though the invention is not identically disclosed or described . . . if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains."

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