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On-Sale Bar Issues Arising in the Representation of R&D Labs



By Thomas Kelton and Huyen Luong of Fulbright & Jaworski LLP

Thomas Kelton is a senior associate in the Dallas office of Fulbright & Jaworski L.L.P.  He focuses his practice on intellectual property matters, including procurement of patents, trademarks, and copyrights. His representative experience includes drafting patent applications for electromagnetic communications devices, software, and radar equipment. His practice also focuses on corporate transactions involving intellectual property.  He can be reached at tkelton@fulbright.com.

Huyen Luong is an associate with Fulbright & Jaworski L.L.P.'s Houston office, where she practices law in the firm's Intellectual Property and Technology practice. She concentrates her work on the computer hardware, software, electronics, energy and telecommunications industries.  She can be reached at hluong@fulbright.com.



There are pure Research and Development (R&D) labs in the United States and around the world, and, as is true with any client, understanding their business models is requisite to providing effective representation. As used herein, an "R&D lab" is an entity that does not pursue manufacturing, but rather performs R&D activities and licenses or sells the rights in discoveries to third parties. Most R&D labs are affiliated with universities but can also be affiliated with government entities or even be for-profit (e.g., a consultancy). It goes without saying that merely performing R&D does not give rise to an on-sale bar under 35 U.S.C. 102. However, a given R&D lab is most likely involved in more sophisticated business activities beyond mere R&D.
The scenario below gives an example of a common activity among some R&D labs using a fictional lab, R&D Inc.:

  • On Day A, Company X approaches R&D Inc. with a technical problem to be solved.
  • On Day B, R&D Inc. and Company X sign a contract wherein R&D Inc. agrees to perform research and development to solve the posed technical problem and to license the solution to Company X.
  • On Day C, the inventors at R&D Inc. invent a design that solves the technical problem, wherein the invention is sufficiently concrete in the inventors' minds as to be ready for patenting and/or be reduced to practice.
  • On Day D, R&D Inc. licenses the technology to Company X, but R&D ...

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