## Facts

- John Kollar filed a patent application (Dec. 5, 1995) claiming a process for preparing dialkyl peroxides using an insoluble heterogeneous acidic catalyst and then separating the mixture from the catalyst.
- The USPTO examiner rejected claims 1–17 under the on-sale bar, 35 U.S.C. § 102(b), based on a July 1, 1980 “Definitive Agreement” between Redox Technologies, Inc. (Kollar’s assignee) and Celanese Corporation.
- The agreement reflected a joint research, development, and commercialization relationship involving sharing technical information and allocating rights to exploit the technology, with compensation structured through royalties.
- The Board of Patent Appeals and Interferences affirmed, characterizing the agreement as a firm commercial offer to sell embodiments of the claimed process.
- Kollar appealed the Board’s decision to the U.S. Court of Appeals for the Federal Circuit.

## Issues

1. Whether the Celanese–Redox “Definitive Agreement” constituted a “commercial offer for sale” of the claimed process under 35 U.S.C. § 102(b) more than one year before the filing date.
2. Whether a license/technology-transfer and joint development agreement, without a sale of products made by the process or an offer to perform the process, satisfies the first prong of the Pfaff on-sale-bar test.

## Decision

- The Federal Circuit vacated the Board’s decision and remanded.
- Applying Pfaff, the court focused on the first prong (commercial offer for sale) and held it was not met.
- The court concluded the agreement was a technology transfer and allocation of exploitation rights with R&D obligations, not an offer to sell performance of the process or a product made by the process.
- Because the Board treated the licensing/know-how transaction as a sale of the process itself, it committed legal error in applying § 102(b).

## Legal Principles

- Under Pfaff, the on-sale bar requires (1) a commercial offer for sale of the invention before the critical date and (2) readiness for patenting; failure of the first prong defeats the bar.
- For process claims, § 102(b) is typically triggered by a commercial offer to sell a product made by the process or an offer to perform the process for a customer.
- A license, assignment, or other transfer of rights and technical know-how—without an offer to sell process performance or products—does not, by itself, constitute placing a claimed process “on sale” under § 102(b).
- The existence of a commercial transaction involving an invention is insufficient unless the transaction amounts to an offer to sell the invention (as defined by ordinary contract-law offer concepts).

## Conclusion

The Federal Circuit held that a joint R&D and commercialization agreement that transfers rights and know-how in a process, with royalty-based compensation, is not a commercial offer for sale of the claimed process under § 102(b), vacated the Board’s on-sale rejection, and remanded for further proceedings.


In re Kollar, 286 F.3d 1326 (Fed. Cir. 2002)