U.S. Supreme Court Bonito Boats v. Thunder Craft Boats, 489 U.S.
141 (1989) Bonito Boats, Inc. v. Thunder Craft
Boats, Inc. No. 87-1346 Argued December 5,
1988 Decided February 21,
1989 498 U.S. 141 CERTIORARI TO THE SUPREME COURT OF
FLORIDA Syllabus Petitioner developed a hull design for a fiberglass recreational
boat that it marketed under the trade name Bonito Boat Model 5VBR.
The manufacturing process involved creating a hardwood model that
was then sprayed with fiberglass to create a mold. The mold then
served to produce the finished fiberglass boats for sale. No patent
application was filed to protect the utilitarian or design aspects
of the hull or the manufacturing process by which the finished
boats were produced. After the Bonito 5VBR had been on the market
for six years, the Florida Legislature enacted a statute that
prohibits the use of a direct molding process to duplicate
unpatented boat hulls, and forbids the knowing sale of hulls so
duplicated. Petitioner subsequently filed an action in a Florida
Circuit Court, alleging that respondent had violated the statute by
using the direct molding process to duplicate the Bonito 5VBR
fiberglass hull and by knowingly selling such duplicates.
Petitioner sought damages, injunctive relief, and an award of
attorney's fees under the Florida law. The trial court granted
respondent's motion to dismiss the complaint on the ground that the
statute conflicted with federal patent law, and was therefore
invalid under the Supremacy Clause of the Federal Constitution. The
Florida Court of Appeals and the Florida Supreme Court
affirmed. Held: The Florida statute is preempted by the Supremacy
Clause. Pp. 489 U. S.
146 -168.

															(a) This Court's decisions have made clear that state regulation
of intellectual property must yield to the extent that it clashes
with the federal patent statute's balance between public right and
private monopoly designed to promote certain creative activity. The
efficient operation of the federal patent system depends upon
substantially free trade in publicly known, unpatented design and
utilitarian conceptions. Sears, Roebuck & Co. v. Stiffel
Co., 376 U. S. 225 ; Compco Corp. v. Day-Brite Lighting, Inc., 376 U.
S. 234 . A state law that interferes with the enjoyment
of such a conception contravenes the ultimate goal of public
disclosure and use that is the centerpiece of federal patent
policy. Moreover, through the creation of patent-like rights, the
States could essentially redirect inventive efforts away from the
careful criteria of patentability developed by Congress over the
last 200 years. Pp. 489 U. S.
146 -157. Page 489 U. S. 142 (b) By offering patent-like protection for ideas deemed
unprotected under the federal patent scheme, the Florida statute
conflicts with the "strong federal policy favoring free competition
in ideas which do not merit patent protection." Lear, Inc. v.
Adkins, 395 U. S. 653 , 395 U. S. 656 .
The Florida statute does not prohibit "unfair competition" in the
usual sense of that term, but rather is aimed at promoting
inventive effort by preventing the efficient exploitation of the
design and utilitarian conceptions embodied in the product itself.
It endows the original boat manufacturer with rights against the
world, similar in scope and operation to the rights accorded the
federal patentee. This protection is made available for an
unlimited number of years to all boat hulls and their component
parts. Protection is available for subject matter for which patent
protection has been denied or has expired, as well as for designs
which have been freely revealed to the consuming public by their
creators. In this case, the statute operates to allow petitioner to
assert a substantial property right in a design idea which has
already been available to the public for over six years. Pp. 489 U. S.
157 -160.

															(c) That the Florida statute does not restrict all means of
reproduction does not eliminate the conflict with the federal
patent scheme. In essence, the statute grants the original
manufacturer the right to prohibit a form of reverse engineering of
a product in general circulation. This is one of the rights granted
to the federal patent holder, but has never been part of state
protection under the law of unfair competition or trade secrets.
The study and recomposition of unpatented articles available to the
public at large may lead to significant advances in technology and
design. Moreover, the threat of reverse engineering of unpatented
articles creates a significant spur to the achievement of the
rigorous standards of patentability established by Congress. By
substantially altering this competitive reality, the Florida
statute and similar state laws may erect themselves as substantial
competitors to the federal patent scheme. Such a result would
contravene the congressional intent to create a uniform system for
determining the boundaries of public and private right in
utilitarian and design ideas. Kewanee Oil Co. v. Bicron
Corp., 416 U. S. 470 ,
distinguished. Pp. 489 U. S.
160 -165.

															(d) The Patent and Copyright Clauses of the Federal Constitution
do not by their own force, or by negative implication, deprive the
States of the power to adopt rules to promote intellectual creation
within their own jurisdictions where Congress has left the field
free of federal regulation. Goldstein v. California, 412 U. S. 546 .
Even as to design and utilitarian conceptions within the subject
matter of the patent laws, the States may place limited regulations
on the exploitation of unpatented ideas to prevent consumer
confusion as to source or the tortious appropriation of trade
secrets. Both the law of unfair competition and state trade secret
law have coexisted harmoniously with federal patent protection Page 489 U. S. 143 for almost 200 years, and Congress has demonstrated its full
awareness of the operation of state law in these areas without any
indication of disapproval. Silkwood v. Kerr-McGee Corp., 464 U. S. 238 . The
same cannot be said of the Florida scheme at issue here, where
Congress has explicitly considered the need for additional
protections for industrial designs and declined to act. By
according patent-like protection to the otherwise unprotected
design and utilitarian aspects of products in general circulation,
the Florida statute enters a field of regulation which the patent
laws have reserved to Congress, and is therefore preempted by the
Supremacy Clause of the Federal Constitution. Pp. 489 U. S.
165 -168. 515 So. 2d
220 , affirmed.

															O'CONNOR, J., delivered the opinion for a unanimous Court.

															JUSTICE O'CONNOR delivered the opinion of the Court.

															We must decide today what limits the operation of the federal
patent system places on the States' ability to offer substantial
protection to utilitarian and design ideas which the patent laws
leave otherwise unprotected. In Interpart Page 489 U. S. 144 Corp. v. Italia, 777 F.2d 678 (1985), the Court of
Appeals for the Federal Circuit concluded that a California law
prohibiting the use of the "direct molding process" to duplicate
unpatented articles posed no threat to the policies behind the
federal patent laws. In this case, the Florida Supreme Court came
to a contrary conclusion. It struck down a Florida statute which
prohibits the use of the direct molding process to duplicate
unpatented boat hulls, finding that the protection offered by the
Florida law conflicted with the balance struck by Congress in the
federal patent statute between the encouragement of invention and
free competition in unpatented ideas. See 515 So. 2d 220 (1987). We granted certiorari to resolve the conflict, 486 U.S.
1004 (1988), and we now affirm the judgment of the Florida Supreme
Court. I In September, 1976, petitioner Bonito Boats, Inc. (Bonito), a
Florida corporation, developed a hull design for a fiberglass
recreational boat which it marketed under the trade name Bonito
Boat Model 5VBR. App. 5. Designing the boat hull required
substantial effort on the part of Bonito. A set of engineering
drawings was prepared, from which a hardwood model was created. The
hardwood model was then sprayed with fiberglass to create a mold,
which then served to produce the finished fiberglass boats for
sale. The 5VBR was placed on the market sometime in September,
1976. There is no indication in the record that a patent
application was ever filed for protection of the utilitarian or
design aspects of the hull, or for the process by which the hull
was manufactured. The 5VBR was favorably received by the boating
public, and "a broad interstate market" developed for its sale. Ibid. In May, 1983, after the Bonito 5VBR had been available to the
public for over six years, the Florida Legislature enacted
Fla.Stat. § 559.94 (1987). The statute makes

															"[i]t . . . unlawful for any person to use the direct molding
process to duplicate Page 489 U. S. 145 for the purpose of sale any manufactured vessel hull or
component part of a vessel made by another without the written
permission of that other person."

															§ 559.94(2). The statute also makes it unlawful for a person to
"knowingly sell a vessel hull or component part of a vessel
duplicated in violation of subsection (2)." § 559.94(3). Damages,
injunctive relief, and attorney's fees are made available to "[a]ny
person who suffers injury or damage as the result of a violation"
of the statute. § 559.94(4). The statute was made applicable to
vessel hulls or component parts duplicated through the use of
direct molding after July 1, 1983. § 559.94(5).

															On December 21, 1984, Bonito filed this action in the Circuit
Court of Orange County, Florida. The complaint alleged that
respondent here, Thunder Craft Boats, Inc. (Thunder Craft), a
Tennessee corporation, had violated the Florida statute by using
the direct molding process to duplicate the Bonito 5VBR fiberglass
hull, and had knowingly sold such duplicates in violation of the
Florida statute. Bonito sought "a temporary and permanent
injunction prohibiting [Thunder Craft] from continuing to
unlawfully duplicate and sell Bonito Boat hulls or components," as
well as an accounting of profits, treble damages, punitive damages,
and attorney's fees. App. 6, 7. Respondent filed a motion to
dismiss the complaint, arguing that, under this Court's decisions
in Sears, Roebuck & Co. v. Stiffel Co., 376 U.
S. 225 (1964), and Compco Corp. v. Day-Brite
Lighting, Inc., 376 U. S. 234 (1964), the Florida statute conflicted with federal patent law, and
was therefore invalid under the Supremacy Clause of the Federal
Constitution. App. 8-9. The trial court granted respondent's
motion, id. at 10-11, and a divided Court of Appeals
affirmed the dismissal of petitioner's complaint. 487 So. 2d 395
(1986).

															On appeal, a sharply divided Florida Supreme Court agreed with
the lower courts' conclusion that the Florida law impermissibly
interfered with the scheme established by the federal patent laws. See 515 So. 2d 220 (1987). The majority Page 489 U. S. 146 read our decisions in Sears and Compco for the
proposition that,

															"when an article is introduced into the public domain, only a
patent can eliminate the inherent risk of competition, and then but
for a limited time."

															515 So. 2d at 222. Relying on the Federal Circuit's decision in
the Interpart case, the three dissenting judges argued
that the Florida anti-direct-molding provision "does not prohibit
the copying of an unpatented item. It prohibits one method of
copying; the item remains in the public domain." 515 So. 2d at 223
(Shaw, J., dissenting). II Article I, § 8, cl. 8, of the Constitution gives Congress the
power

															"[t]o promote the Progress of Science and useful Arts, by
securing for limited Times to Authors and Inventors the exclusive
Right to their respective Writings and Discoveries."

															The Patent Clause itself reflects a balance between the need to
encourage innovation and the avoidance of monopolies which stifle
competition without any concomitant advance in the "Progress of
Science and useful Arts." As we have noted in the past, the Clause
contains both a grant of power and certain limitations upon the
exercise of that power. Congress may not create patent monopolies
of unlimited duration, nor may it

															"authorize the issuance of patents whose effects are to remove
existent knowledge from the public domain, or to restrict free
access to materials already available." Graham v. John Deere Co. of Kansas City, 383 U. S.
1 , 383 U. S. 6 (1966).

															From their inception, the federal patent laws have embodied a
careful balance between the need to promote innovation and the
recognition that imitation and refinement through imitation are
both necessary to invention itself, and the very lifeblood of a
competitive economy. Soon after the adoption of the Constitution,
the First Congress enacted the Patent Act of 1790, which allowed
the grant of a limited monopoly of 14 years to any applicant
that

															"hath . . . invented or discovered Page 489 U. S. 147 any useful art, manufacture, . . . or device, or any improvement
therein not before known or used."

															1 Stat. 109, 110. In addition to novelty, the 1790 Act required
that the invention be "sufficiently useful and important" to merit
the 14-year right of exclusion. Ibid. Section 2 of the Act
required that the patentee deposit with the Secretary of State a
specification and, if possible, a model of the new invention,

															"which specification shall be so particular, and said models so
exact, as not only to distinguish the invention or discovery from
other things before known and used, but also to enable a workman or
other person skilled in the art or manufacture . . . to make,
construct, or use the same, to the end that the public may have the
full benefit thereof, after the expiration of the patent term." Ibid. The first Patent Act established an agency known by
self-designation as the "Commissioners for the promotion of Useful
Arts," composed of the Secretary of State, the Secretary of the
Department of War, and the Attorney General, any two of whom could
grant a patent. Thomas Jefferson was the first Secretary of State,
and the driving force behind early federal patent policy. For
Jefferson, a central tenet of the patent system in a free market
economy was that "a machine of which we were possessed, might be
applied by every man to any use of which it is susceptible." 13
Writings of Thomas Jefferson 335 (Memorial ed.1904). He viewed a
grant of patent rights in an idea already disclosed to the public
as akin to an ex post facto law, "obstruct[ing] others in
the use of what they possessed before." Id. at 326-327.
Jefferson also played a large role in the drafting of our Nation's
second Patent Act, which became law in 1793. The Patent Act of 1793
carried over the requirement that the subject of a patent
application be "not known or used before the application." Ch. 11,
1 Stat. 318, 319. A defense to an infringement action was created
where

															"the thing, thus secured by patent, was not originally
discovered by the patentee, but had been in use, or had been
described in some public work Page 489 U. S. 148 anterior to the supposed discovery of the patentee." Id. at 322. Thus, from the outset, federal patent law
has been about the difficult business

															"of drawing a line between the things which are worth to the
public the embarrassment of an exclusive patent, and those which
are not."

															13 Writings of Thomas Jefferson, supra, at 335.

															Today's patent statute is remarkably similar to the law as known
to Jefferson in 1793. Protection is offered to

															"[w]hoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and
useful improvement thereof."

															35 U.S.C. § 101. Since 1842, Congress has also made protection
available for "any new, original and ornamental design for an
article of manufacture." 35 U.S.C. § 171. To qualify for
protection, a design must present an aesthetically pleasing
appearance that is not dictated by function alone, and must satisfy
the other criteria of patentability. The novelty requirement of
patentability is presently expressed in 35 U.S.C. §§ 102(a) and
(b), which provide:

															"A person shall be entitled to a patent unless -- "

															"(a) the invention was known or used by others in this country,
or patented or described in a printed publication in this or a
foreign country, before the invention thereof by the applicant for
patent, or"

															"(b) the invention was patented or described in a printed
publication in this or a foreign country or in public use or on
sale in this country more than one year prior to the date of
application for patent in the United States. . . ."

															Sections 102(a) and (b) operate in tandem to exclude from
consideration for patent protection knowledge that is already
available to the public. They express a congressional determination
that the creation of a monopoly in such information would not only
serve no socially useful purpose, but would in fact injure the
public by removing existing knowledge from public use. From the
Patent Act of 1790 to the present day, Page 489 U. S. 149 the public sale of an unpatented article has acted as a complete
bar to federal protection of the idea embodied in the article thus
placed in public commerce.

															In the case of Pennock v.
Dialogue , 2 Pet. 1 (1829), Justice Story applied
these principles under the patent law of 1800. The patentee had
developed a new technique for the manufacture of rubber hose for
the conveyance of air and fluids. The invention was reduced to
practice in 1811, but letters patent were not sought and granted
until 1818. In the interval, the patentee had licensed a third
party to market the hose, and over 13,000 feet of the new product
had been sold in the city of Philadelphia alone. The Court
concluded that the patent was invalid due to the prior public sale,
indicating that, "if [an inventor] suffers the thing he invented to
go into public use, or to be publicly sold for use" "[h]is
voluntary act or acquiescence in the public sale and use is an
abandonment of his right." Id. at 23-24. The Court noted
that, under the common law of England, letters patent were
unavailable for the protection of articles in public commerce at
the time of the application, id. at 20, and that this same
doctrine was immediately embodied in the first patent laws passed
in this country. Id. at 21-22.

															As the holding of Pennock makes clear, the federal
patent scheme creates a limited opportunity to obtain a property
right in an idea. Once an inventor has decided to lift the veil of
secrecy from his work, he must choose the protection of a federal
patent or the dedication of his idea to the public at large. As
Judge Learned Hand once put it:

															"[I]t is a condition upon the inventor's right to a patent that
he shall not exploit his discovery competitively after it is ready
for patenting; he must content himself with either secrecy or legal
monopoly." Metallizing Engineering Co. v. Kenyon Bearing & Auto
Parts Co., 153 F.2d 516, 520 (CA2), cert. denied, 328
U.S. 840 (1946).

															In addition to the requirements of novelty and utility, the
federal patent law has long required that an innovation not be Page 489 U. S. 150 anticipated by the prior art in the field. Even if a particular
combination of elements is "novel" in the literal sense of the
term, it will not qualify for federal patent protection if its
contours are so traced by the existing technology in the field that
the "improvement is the work of the skillful mechanic, not that of
the inventor." Hotchkiss v.
Greenwood , 11 How. 248, 52 U. S. 267 (1851). In 1952, Congress codified this judicially developed
requirement in 35 U.S.C. § 103, which refuses protection to new
developments where

															"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 of ordinary skill in the art to which said subject matter
pertains."

															The nonobviousness requirement extends the field of unpatentable
material beyond that which is known to the public under § 102, to
include that which could readily be deduced from publicly available
material by a person of ordinary skill in the pertinent field of
endeavor. See Graham, 383 U.S. at 383 U. S. 15 .
Taken together, the novelty and nonobviousness requirements express
a congressional determination that the purposes behind the Patent
Clause are best served by free competition and exploitation of that
which is either already available to the public, or that which may
be readily discerned from publicly available material. See
Aronson v. Quick Point Pencil Co., 440 U.
S. 257 , 440 U. S. 262 (1979) ("[T]he stringent requirements for patent protection seek to
ensure that ideas in the public domain remain there for the use of
the public").

															The applicant whose invention satisfies the requirements of
novelty, nonobviousness, and utility, and who is willing to reveal
to the public the substance of his discovery and "the best mode . .
. of carrying out his invention," 35 U.S.C. § 112, is granted "the
right to exclude others from making, using, or selling the
invention throughout the United States," for a period of 17 years.
35 U.S.C. § 154. The federal patent system thus embodies a
carefully crafted bargain for encouraging Page 489 U. S. 151 the creation and disclosure of new, useful, and nonobvious
advances in technology and design in return for the exclusive right
to practice the invention for a period of years.

															"[The inventor] may keep his invention secret and reap its
fruits indefinitely. In consideration of its disclosure and the
consequent benefit to the community, the patent is granted. An
exclusive enjoyment is guaranteed him for seventeen years, but,
upon expiration of that period, the knowledge of the invention
inures to the people, who are thus enabled without restriction to
practice it and profit by its use." United States v. Dubilier Condenser Corp., 289 U.
S. 178 , 289 U. S.
186 -187 (1933).

															The attractiveness of such a bargain, and its effectiveness in
inducing creative effort and disclosure of the results of that
effort, depend almost entirely on a backdrop of free competition in
the exploitation of unpatented designs and innovations. The novelty
and nonobviousness requirements of patentability embody a
congressional understanding, implicit in the Patent Clause itself,
that free exploitation of ideas will be the rule, to which the
protection of a federal patent is the exception. Moreover, the
ultimate goal of the patent system is to bring new designs and
technologies into the public domain through disclosure. State law
protection for techniques and designs whose disclosure has already
been induced by market rewards may conflict with the very purpose
of the patent laws by decreasing the range of ideas available as
the building blocks of further innovation. The offer of federal
protection from competitive exploitation of intellectual property
would be rendered meaningless in a world where substantially
similar state law protections were readily available. To a limited
extent, the federal patent laws must determine not only what is
protected, but also what is free for all to use. Cf. Arkansas
Electric Cooperative Corp. v. Arkansas Public Service Comm'n, 461 U. S. 375 , 461 U. S. 384 (1983) ("[A] federal decision to forgo regulation in a given area
may imply an authoritative federal determination that the area is
best left un regulated, Page 489 U. S. 152 and, in that event, would have as much preemptive force as a
decision to regulate") (emphasis in original).

															Thus our past decisions have made clear that state regulation of
intellectual property must yield to the extent that it clashes with
the balance struck by Congress in our patent laws. The tension
between the desire to freely exploit the full potential of our
inventive resources and the need to create an incentive to deploy
those resources is constant. Where it is clear how the patent laws
strike that balance in a particular circumstance, that is not a
judgment the States may second-guess. We have long held that, after
the expiration of a federal patent, the subject matter of the
patent passes to the free use of the public as a matter of federal
law. See Coats v. Merrick Thread Co., 149 U.
S. 562 , 149 U. S. 572 (1893) ("[P]laintiffs' right to the use of the embossed periphery
expired with their patent, and the public had the same right to
make use of it as if it had never been patented"); Kellogg Co.
v. National Biscuit Co., 305 U. S. 111 (1938); Singer Mfg. Co. v. June Mfg. Co., 163 U.
S. 169 (1896). Where the public has paid the
congressionally mandated price for disclosure, the States may not
render the exchange fruitless by offering patent-like protection to
the subject matter of the expired patent.

															"It is self-evident that, on the expiration of a patent, the
monopoly created by it ceases to exist, and the right to make the
thing formerly covered by the patent becomes public property." Singer, supra, at 163 U. S.
185 .

															In our decisions in Sears, Roebuck & Co. v. Stiffel
Co., 376 U. S. 225 (1964), and Compco Corp. v. Day-Brite Lighting, Inc., 376 U. S. 234 (1964), we found that publicly known design and utilitarian ideas
which were unprotected by patent occupied much the same position as
the subject matter of an expired patent. The Sears case
involved a pole lamp originally designed by the plaintiff Stiffel,
who had secured both design and mechanical patents on the lamp.
Sears purchased unauthorized copies of the lamps, and was able to
sell them at a retail price practically equivalent to the
wholesale Page 489 U. S. 153 price of the original manufacturer. Sears, supra, at 376 U. S. 226 .
Stiffel brought an action against Sears in Federal District Court,
alleging infringement of the two federal patents and unfair
competition under Illinois law. The District Court found that
Stiffel's patents were invalid due to anticipation in the prior
art, but nonetheless enjoined Sears from further sales of the
duplicate lamps based on a finding of consumer confusion under the
Illinois law of unfair competition. The Court of Appeals affirmed,
coming to the conclusion that the Illinois law of unfair
competition prohibited product simulation even in the absence of
evidence that the defendant took some further action to induce
confusion as to source.

															This Court reversed, finding that the unlimited protection
against copying which the Illinois law accorded an unpatentable
item whose design had been fully disclosed through public sales
conflicted with the federal policy embodied in the patent laws. The
Court stated:

															"In the present case the 'pole lamp' sold by Stiffel has been
held not to be entitled to the protection of either a mechanical or
a design patent. An unpatentable article, like an article on which
the patent has expired, is in the public domain and may be made and
sold by whoever chooses to do so. What Sears did was to copy
Stiffel's design and sell lamps almost identical to those sold by
Stiffel. This it had every right to do under the federal patent
laws."

															376 U.S. at 376 U. S.
231 .

															A similar conclusion was reached in Compco, where the
District Court had extended the protection of Illinois' unfair
competition law to the functional aspects of an unpatented
fluorescent lighting system. The injunction against copying of an
unpatented article, freely available to the public,
impermissibly

															"interfere[d] with the federal policy, found in Art. I, § 8, cl.
8, of the Constitution and in the implementing federal statutes, of
allowing free access to copy whatever the federal patent and
copyright laws leave in the public domain." Compco, supra, at 376 U. S.
237 . Page 489 U. S. 154 The preemptive sweep of our decisions in Sears and Compco has been the subject of heated scholarly and
judicial debate. See, e.g., Symposium, Product Simulation:
A Right or a Wrong?, 64 Colum.L.Rev. 1178 (1964); Lear, Inc. v.
Adkins, 395 U. S. 653 , 395 U. S. 676 (1969) (Black, J., concurring in part and dissenting in part). Read
at their highest level of generality, the two decisions could be
taken to stand for the proposition that the States are completely
disabled from offering any form of protection to articles or
processes which fall within the broad scope of patentable subject
matter. See id. at 395 U. S. 677 .
Since the potentially patentable includes "anything under the sun
that is made by man," Diamond v. Chakrabarty, 447 U.
S. 303 , 447 U. S. 309 (1980) (citation omitted), the broadest reading of Sears would prohibit the States from regulating the deceptive simulation
of trade dress or the tortious appropriation of private
information.

															That the extrapolation of such a broad preemptive principle from Sears is inappropriate is clear from the balance struck in Sears itself. The Sears Court made it plain that
the States

															"may protect businesses in the use of their trademarks, labels,
or distinctive dress in the packaging of goods so as to prevent
others, by imitating such markings, from misleading purchasers as
to the source of the goods." Sears, supra, at 376 U. S. 232 (footnote omitted). Trade dress is, of course, potentially the
subject matter of design patents. See W. T. Rogers Co. v.
Keene, 778 F.2d 334, 337 (CA7 1985). Yet our decision in Sears clearly indicates that the States may place limited
regulations on the circumstances in which such designs are used in
order to prevent consumer confusion as to source. Thus, while Sears speaks in absolutist terms, its conclusion that the
States may place some conditions on the use of trade dress
indicates an implicit recognition that all state regulation of
potentially patentable but unpatented subject matter is not ipso facto preempted by the federal patent laws. Page 489 U. S. 155 What was implicit in our decision in Sears we have made
explicit in our subsequent decisions concerning the scope of
federal preemption of state regulation of the subject matter of
patent. Thus, in Kewanee Oil Co. v. Bicron Corp., 416 U. S. 470 (1974), we held that state protection of trade secrets did not
operate to frustrate the achievement of the congressional
objectives served by the patent laws. Despite the fact that state
law protection was available for ideas which clearly fell within
the subject matter of patent, the Court concluded that the nature
and degree of state protection did not conflict with the federal
policies of encouragement of patentable invention and the prompt
disclosure of such innovations.

															Several factors were critical to this conclusion. First, because
the public awareness of a trade secret is, by definition, limited,
the Court noted that

															"the policy that matter once in the public domain must remain in
the public domain is not incompatible with the existence of trade
secret protection." Id. at 416 U. S. 484 .
Second, the Kewanee Court emphasized that "[t]rade secret
law provides far weaker protection in many respects than the patent
law." Id. at 416 U. S.
489 -490. This point was central to the Court's
conclusion that trade secret protection did not conflict with
either the encouragement or disclosure policies of the federal
patent law. The public at large remained free to discover and
exploit the trade secret through reverse engineering of products in
the public domain or by independent creation. Id. at 416 U. S. 490 .
Thus, the possibility that trade secret protection would divert
inventors from the creative effort necessary to satisfy the
rigorous demands of patent protection was remote indeed. Ibid. Finally, certain aspects of trade secret law
operated to protect noneconomic interests outside the sphere of
congressional concern in the patent laws. As the Court noted, "[a]
most fundamental human right, that of privacy, is threatened when
industrial espionage is condoned or is made profitable." Id. at 416 U. S. 487 (footnote omitted). There was no indication that Congress Page 489 U. S. 156 had considered this interest in the balance struck by the patent
laws, or that state protection for it would interfere with the
policies behind the patent system.

															We have since reaffirmed the pragmatic approach which Kewanee takes to the preemption of state laws dealing with
the protection of intellectual property. See Aronson, 440
U.S. at 440 U. S. 262 ("State law is not displaced merely because the contract relates to
intellectual property which may or may not be patentable; the
states are free to regulate the use of such intellectual property
in any manner not inconsistent with federal law"). At the same
time, we have consistently reiterated the teaching of Sears and Compco that ideas, once placed before
the public without the protection of a valid patent, are subject to
appropriation without significant restraint. Aronson,
supra, at 440 U. S.
263 .

															At the heart of Sears and Compco is the
conclusion that the efficient operation of the federal patent
system depends upon substantially free trade in publicly known,
unpatented design and utilitarian conceptions. In Sears, the state law offered "the equivalent of a patent monopoly," 376
U.S. at 376 U. S. 233 ,
in the functional aspects of a product which had been placed in
public commerce absent the protection of a valid patent. While, as
noted above, our decisions since Sears have taken a
decidedly less rigid view of the scope of federal preemption under
the patent laws, e.g., Kewanee, supra, at 416 U. S.
479 -480, we believe that the Sears Court
correctly concluded that the States may not offer patent-like
protection to intellectual creations which would otherwise remain
unprotected as a matter of federal law. Both the novelty and the
nonobviousness requirements of federal patent law are grounded in
the notion that concepts within the public grasp, or those so
obvious that they readily could be, are the tools of creation
available to all. They provide the baseline of free competition
upon which the patent system's incentive to creative effort
depends. A state law that substantially interferes with the
enjoyment of an unpatented utilitarian or design conception Page 489 U. S. 157 which has been freely disclosed by its author to the public at
large impermissibly contravenes the ultimate goal of public
disclosure and use which is the centerpiece of federal patent
policy. Moreover, through the creation of patent-like rights, the
States could essentially redirect inventive efforts away from the
careful criteria of patentability developed by Congress over the
last 200 years. We understand this to be the reasoning at the core
of our decisions in Sears and Compco, and we
reaffirm that reasoning today. III We believe that the Florida statute at issue in this case so
substantially impedes the public use of the otherwise unprotected
design and utilitarian ideas embodied in unpatented boat hulls as
to run afoul of the teaching of our decisions in Sears and Compco. It is readily apparent that the Florida statute
does not operate to prohibit "unfair competition" in the usual
sense that the term is understood. The law of unfair competition
has its roots in the common law tort of deceit: its general concern
is with protecting consumers from confusion as to source. While
that concern may result in the creation of "quasi-property rights"
in communicative symbols, the focus is on the protection of
consumers, not the protection of producers as an incentive to
product innovation. Judge Hand captured the distinction well in Crescent Tool Co. v. Kilborn & Bishop Co., 247 F. 299,
301 (CA2 1917), where he wrote:

															"[T]he plaintiff has the right not to lose his customers through
false representations that those are his wares which in fact are
not, but he may not monopolize any design or pattern, however
trifling. The defendant, on the other hand, may copy plaintiff's
goods slavishly down to the minutest detail: but he may not
represent himself as the plaintiff in their sale."

															With some notable exceptions, including the interpretation of
the Illinois law of unfair competition at issue in Sears and Page 489 U. S. 158 Compco, see Sears, supra, at 376 U. S.
227 -228, n. 2, the common law tort of unfair competition
has been limited to protection against copying of nonfunctional
aspects of consumer products which have acquired secondary meaning
such that they operate as a designation of source. See
generally P. Kaufmann, Passing Off and Misappropriation, in 9
International Review of Industrial Property and Copyright Law,
Studies in Industrial Property and Copyright Law 100-109 (1986).
The "protection" granted a particular design under the law of
unfair competition is thus limited to one context where consumer
confusion is likely to result; the design "idea" itself may be
freely exploited in all other contexts.

															In contrast to the operation of unfair competition law, the
Florida statute is aimed directly at preventing the exploitation of
the design and utilitarian conceptions embodied in the product
itself. The sparse legislative history surrounding its enactment
indicates that it was intended to create an inducement for the
improvement of boat hull designs. See Tr. of Meeting of
Transportation Committee, Florida House of Representatives, May 3,
1983, reprinted at App. 22 ("[T]here is no inducement for
[a] quality boat manufacturer to improve these designs and
secondly, if he does, it is immediately copied. This would prevent
that, and allow him recourse in circuit court"). To accomplish this
goal, the Florida statute endows the original boat hull
manufacturer with rights against the world, similar in scope and
operation to the rights accorded a federal patentee. Like the
patentee, the beneficiary of the Florida statute may prevent a
competitor from "making" the product in what is evidently the most
efficient manner available and from "selling" the product when it
is produced in that fashion. Compare 35 U.S.C. § 154. * Page 489 U. S. 159 The Florida scheme offers this protection for an unlimited
number of years to all boat hulls and their component parts,
without regard to their ornamental or technological merit.
Protection is available for subject matter for which patent
protection has been denied or has expired, as well as for designs
which have been freely revealed to the consuming public by their
creators.

															In this case, the Bonito 5VBR fiberglass hull has been freely
exposed to the public for a period in excess of six years. For
purposes of federal law, it stands in the same stead as an item for
which a patent has expired or been denied: it is unpatented and
unpatentable. See 35 U.S.C. § 102(b). Whether because of a
determination of unpatentability or other commercial concerns,
petitioner chose to expose its hull design to the public in the
marketplace, eschewing the bargain held out by the federal patent
system of disclosure in exchange.for exclusive use. Yet, the
Florida statute allows petitioner to reassert a substantial
property right in the idea, thereby constricting the spectrum of
useful public knowledge. Moreover, it does so without the careful
protections of high standards of innovation and limited monopoly
contained in the federal scheme. We think it clear that such
protection conflicts with the federal policy "that all ideas in
general circulation be dedicated to the common good Page 489 U. S. 160 unless they are protected by a valid patent." Lear, Inc. v.
Adkins, 395 U.S. at 395 U. S.
668 .

															That the Florida statute does not remove all means of
reproduction and sale does not eliminate the conflict with the
federal scheme. See Kellogg, 305 U.S. at 395 U. S. 122 .
In essence, the Florida law prohibits the entire public from
engaging in a form of reverse engineering of a product in the
public domain. This is clearly one of the rights vested in the
federal patent holder, but has never been a part of state
protection under the law of unfair competition or trade secrets. See Kewanee, 416 U.S. at 416 U. S. 476 ("A trade secret law, however, does not offer protection against
discovery by . . . so-called reverse engineering, that is by
starting with the known product and working backward to divine the
process which aided in its development or manufacture"); see
also Chicago Lock Co. v. Fanberg, 676 F.2d 400, 405 (CA9 1982)
("A lock purchaser's own reverse-engineering of his own lock, and
subsequent publication of the serial number-key code correlation,
is an example of the independent invention and reverse engineering
expressly allowed by trade secret doctrine"). The duplication of
boat hulls and their component parts may be an essential part of
innovation in the field of hydrodynamic design. Variations as to
size and combination of various elements may lead to significant
advances in the field. Reverse engineering of chemical and
mechanical articles in the public domain often leads to significant
advances in technology. If Florida may prohibit this particular
method of study and recomposition of an unpatented article, we fail
to see the principle that would prohibit a State from banning the
use of chromatography in the reconstitution of unpatented chemical
compounds, or the use of robotics in the duplication of machinery
in the public domain.

															Moreover, as we noted in Kewanee, the competitive
reality of reverse engineering may act as a spur to the inventor,
creating an incentive to develop inventions that meet the rigorous
requirements of patentability. 416 U.S. at 416 U. S.
489 -490. Page 489 U. S. 161 The Florida statute substantially reduces this competitive
incentive, thus eroding the general rule of free competition upon
which the attractiveness of the federal patent bargain depends. The
protections of state trade secret law are most effective at the
developmental stage, before a product has been marketed and the
threat of reverse engineering becomes real. During this period,
patentability will often be an uncertain prospect, and, to a
certain extent, the protection offered by trade secret law may
"dovetail" with the incentives created by the federal patent
monopoly. See Goldstein, Kewanee Oil Co. v. Bicron Corp.: Notes on a Closing Circle, 1974 Sup.Ct.Rev. 81, 92. In contrast,
under the Florida scheme, the would-be inventor is aware from the
outset of his efforts that rights against the public are available
regardless of his ability to satisfy the rigorous standards of
patentability. Indeed, it appears that even the most mundane and
obvious changes in the design of a boat hull will trigger the
protections of the statute. See Fla.Stat. § 559.94(2)
(1987) (protecting "any manufactured vessel hull or component
part"). Given the substantial protection offered by the Florida
scheme, we cannot dismiss as hypothetical the possibility that it
will become a significant competitor to the federal patent laws,
offering investors similar protection without the quid pro
quo of substantial creative effort required by the federal
statute. The prospect of all 50 States' establishing similar
protections for preferred industries without the rigorous
requirements of patentability prescribed by Congress could pose a
substantial threat to the patent system's ability to accomplish its
mission of promoting progress in the useful arts.

															Finally, allowing the States to create patent-like rights in
various products in public circulation would lead to administrative
problems of no small dimension. The federal patent scheme provides
a basis for the public to ascertain the status of the intellectual
property embodied in any article in general circulation. Through
the application process, detailed information Page 489 U. S. 162 concerning the claims of the patent holder is compiled in a
central location. See 35 U.S.C. §§ 111-114. The
availability of damages in an infringement action is made
contingent upon affixing a notice of patent to the protected
article. 35 U.S.C. § 287. The notice requirement is designed "for
the information of the public," Wine Railway Appliance Co. v.
Enterprise Railway Equipment Co., 297 U.
S. 387 , 297 U. S. 397 (1936), and provides a ready means of discerning the status of the
intellectual property embodied in an article of manufacture or
design. The public may rely upon the lack of notice in exploiting
shapes and designs accessible to all. See Devices for Medicine,
Inc. v. Boehl, 822 F.2d 1062, 1066 (CA Fed.1987) ("Having sold
the product unmarked, [the patentee] could hardly maintain
entitlement to damages for its use by a purchaser uninformed that
such use would violate [the] patent").

															The Florida scheme blurs this clear federal demarcation between
public and private property. One of the fundamental purposes behind
the Patent and Copyright Clauses of the Constitution was to promote
national uniformity in the realm of intellectual property. See The Federalist No. 43, p. 309 (B. Wright ed.1961).
Since the Patent Act of 1800, Congress has lodged exclusive
jurisdiction of actions "arising under" the patent laws in the
federal courts, thus allowing for the development of a uniform body
of law in resolving the constant tension between private right and
public access. See 28 U.S.C. § 1338; see also Chisum, The Allocation of Jurisdiction Between State and Federal
Courts in Patent Litigation, 46 Wash.L.Rev. 633, 636 (1971).
Recently, Congress conferred exclusive jurisdiction of all patent
appeals on the Court of Appeals for the Federal Circuit, in order
to "provide nationwide uniformity in patent law." H.R.Rep. No.
97-312, p. 20 (1981). This purpose is frustrated by the Florida
scheme, which renders the status of the design and utilitarian
"ideas" embodied in the boat hulls it protects uncertain. Given the
inherently ephemeral nature Page 489 U. S. 163 of property in ideas, and the great power such property has to
cause harm to the competitive policies which underlay the federal
patent laws, the demarcation of broad zones of public and private
right is "the type of regulation that demands a uniform national
rule." Ray v. Atlantic Richfield Co., 435 U.
S. 151 , 435 U. S. 179 (1978). Absent such a federal rule, each State could afford
patent-like protection to particularly favored home industries,
effectively insulating them from competition from outside the
State.

															Petitioner and its supporting amici place great weight
on the contrary decision of the Court of Appeals for the Federal
Circuit in Interpart Corp. v. Italia. In upholding the
application of the California "anti-direct-molding" statute to the
duplication of unpatented automobile mirrors, the Federal Circuit
stated:

															"The statute prevents unscrupulous competitors from obtaining a
product and using it as the 'plug' for making a mold. The statute
does not prohibit copying the design of the product in any other
way; the latter if in the public domain, is free for anyone to
make, use or sell."

															777 F.2d at 685. The court went on to indicate that "the patent
laws say nothing about the right to copy or the right to use,
they speak only in terms of the right to exclude.'" Ibid., quoting Mine Safety Appliances Co. v. Electric Storage Battery
Co., 56 C.C.P.A. (Pat.) 863, 864, n. 2, 405 F.2d 901, 902, n.
2 (1969). We find this reasoning defective in several respects. The
Federal Circuit apparently viewed the direct molding statute at
issue in Interpart as a mere regulation of the use of
chattels. Yet, the very purpose of anti-direct-molding statutes is
to "reward" the "inventor" by offering substantial protection
against public exploitation of his or her idea embodied in the
product. Such statutes would be an exercise in futility if they did
not have precisely the effect of substantially limiting the ability
of the public to exploit an otherwise unprotected idea. As amicus points out, the direct molding process itself has
been in use since the early 1950's. See Brief for
Charles Page 489 U. S. 164 E. Lipsey as Amicus Curiae 3, n. 2. Indeed, U.S. Patent
No. 3,419,646, issued to Robert L. Smith in 1968, explicitly
discloses and claims a method for the direct molding of boat hulls.
The specifications of the Smith Patent indicate that

															"[i]t is a major object of the present invention to provide a
method for making large molded boat hull molds at very low cost,
once a prototype hull has been provided."

															App. to Brief for Charles E. Lipsey as Amicus Curiae 15a. In fact, it appears that Bonito employed a similar process in
the creation of its own production mold. See supra, at 489 U. S. 144 .
It is difficult to conceive of a more effective method of creating
substantial property rights in an intellectual creation than to
eliminate the most efficient method for its exploitation. Sears and Compco protect more than the right of
the public to contemplate the abstract beauty of an otherwise
unprotected intellectual creation -- they assure its efficient
reduction to practice and sale in the marketplace.

															Appending the conclusionary label "unscrupulous" to such
competitive behavior merely endorses a policy judgment which the
patent laws do not leave the States free to make. Where an item in
general circulation is unprotected by patent, "[r]eproduction of a
functional attribute is legitimate competitive activity." Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U. S. 844 , 456 U. S. 863 (1982) (WHITE, J., concurring in result). See also Bailey v.
Logan Square Typographers, Inc., 441 F.2d 47, 51 (CA7 1971)
(Stevens, J.) ("[T]hat which is published may be freely copied as a
matter of federal right").

															Finally, we are somewhat troubled by the Interpart court's reference to the Mine Safety case for the
proposition that the patent laws say "nothing about the right to
copy or the right to use." As noted above, the federal standards
for patentability, at a minimum, express the congressional
determination that patent-like protection is unwarranted as to
certain classes of intellectual property. The States are simply not
free in this regard to offer equivalent protections to ideas Page 489 U. S. 165 which Congress has determined should belong to all. For almost
100 years, it has been well established that, in the case of an
expired patent, the federal patent laws do create a
federal right to "copy and to use." Sears and Compco extended that rule to potentially patentable ideas
which are fully exposed to the public. The Interpart court's assertion to the contrary is puzzling, and flies in the
face of the same court's decisions applying the teaching of Sears and Compco in other contexts. See Power
Controls Corp. v. Hybrinetics, Inc., 806 F.2d 234, 240 (CA
Fed.1986) ("It is well established . . . that an action for unfair
competition cannot be based upon a functional design"); Gemveto
Jewelry Co. v. Jeff Cooper Inc., 800 F.2d 256, 259 (CA
Fed.1986) (vacating injunction against copying of jewelry designs
issued under state law of unfair competition "in view of the Sears and Compco decisions, which hold that
copying of the article itself that is unprotected by the federal
patent and copyright laws cannot be protected by state law").

															Our decisions since Sears and Compco have made
it clear that the Patent and Copyright Clauses do not, by their own
force or by negative implication, deprive the States of the power
to adopt rules for the promotion of intellectual creation within
their own jurisdictions. See Aronson, 440 U.S. at 440 U. S. 262 ; Goldstein v. California, 412 U. S. 546 ,
552-561 (1973); Kewanee, 416 U.S. at 416 U. S.
478 -479. Thus, where "Congress determines that neither
federal protection nor freedom from restraint is required by the
national interest," Goldstein, supra, at 412 U. S. 559 ,
the States remain free to promote originality and creativity in
their own domains.

															Nor does the fact that a particular item lies within the subject
matter of the federal patent laws necessarily preclude the States
from offering limited protection which does not impermissibly
interfere with the federal patent scheme. As Sears itself
makes clear, States may place limited regulations on the use of
unpatented designs in order to prevent consumer confusion as to
source. In Kewanee, we found that Page 489 U. S. 166 state protection of trade secrets, as applied to both patentable
and unpatentable subject matter, did not conflict with the federal
patent laws. In both situations, state protection was not aimed
exclusively at the promotion of invention itself, and the state
restrictions on the use of unpatented ideas were limited to those
necessary to promote goals outside the contemplation of the federal
patent scheme. Both the law of unfair competition and state trade
secret law have coexisted harmoniously with federal patent
protection for almost 200 years, and Congress has given no
indication that their operation is inconsistent with the operation
of the federal patent laws. See Florida Lime & Avocado
Growers, Inc. v. Paul, 373 U. S. 132 , 373 U.S. 144 (1963); United States v. Bass, 404 U. S. 336 , 404 U. S. 349 (1971).

															Indeed, there are affirmative indications from Congress that
both the law of unfair competition and trade secret protection are
consistent with the balance struck by the patent laws. Section
43(a) of the Lanham Act, 60 Stat. 441, 15 U.S.C. § 1125(a), creates
a federal remedy for making

															"a false designation of origin, or any false description or
representation, including words or other symbols tending falsely to
describe or represent the same. . . ."

															Congress has thus given federal recognition to many of the
concerns that underlie the state tort of unfair competition, and
the application of Sears and Compco to
nonfunctional aspects of a product which have been shown to
identify source must take account of competing federal policies in
this regard. Similarly, as JUSTICE MARSHALL noted in his concurring
opinion in Kewanee: "State trade secret laws and the federal patent laws have
coexisted for many, many, years. During this time, Congress has
repeatedly demonstrated its full awareness of the existence of the
trade secret system, without any indication of disapproval. Indeed,
Congress has in a number of instances given explicit federal
protection to trade secret information provided to federal
agencies." Kewanee, supra, at 416 U. S. 494 (concurring in result) (citation omitted). The case for Page 489 U. S. 167 federal preemption is particularly weak where Congress has
indicated its awareness of the operation of state law in a field of
federal interest, and has nonetheless decided to "stand by both
concepts and to tolerate whatever tension there [is] between them." Silkwood v. Kerr-McGee Corp., 464 U.
S. 238 , 464 U. S. 256 (1984). The same cannot be said of the Florida statute at issue
here, which offers protection beyond that available under the law
of unfair competition or trade secret, without any showing of
consumer confusion, or breach of trust or secrecy.

															The Florida statute is aimed directly at the promotion of
intellectual creation by substantially restricting the public's
ability to exploit ideas that the patent system mandates shall be
free for all to use. Like the interpretation of Illinois unfair
competition law in Sears and Compco, the Florida
statute represents a break with the tradition of peaceful
coexistence between state market regulation and federal patent
policy. The Florida law substantially restricts the public's
ability to exploit an unpatented design in general circulation,
raising the specter of state-created monopolies in a host of useful
shapes and processes for which patent protection has been denied or
is otherwise unobtainable. It thus enters a field of regulation
which the patent laws have reserved to Congress. The patent
statute's careful balance between public right and private monopoly
to promote certain creative activity is a

															"scheme of federal regulation . . . so pervasive as to make
reasonable the inference that Congress left no room for the States
to supplement it." Rice v. Santa Fe Elevator Corp., 331 U.
S. 218 , 331 U. S. 230 (1947).

															Congress has considered extending various forms of limited
protection to industrial design either through the copyright laws
or by relaxing the restrictions on the availability of design
patents. See generally Brown, Design Protection: An
Overview, 34 UCLA L.Rev. 1341 (1987). Congress explicitly refused
to take this step in the copyright laws, see 17 U.S.C. §
101; H.R.Rep. No. 94-1476, p. 55 (1976), and, Page 489 U. S. 168 despite sustained criticism for a number of years, it has
declined to alter the patent protections presently available for
industrial design. See Report of the President's
Commission on the Patent System, S. Doc. No. 5, 90th Cong., 1st
Sess., 20-21 (1967); Lindgren, The Sanctity of the Design Patent:
Illusion or Reality?, 10 Okla.City L.Rev.195 (1985), It is for
Congress to determine if the present system of design and utility
patents is ineffectual in promoting the useful arts in the context
of industrial design. By offering patent-like protection for ideas
deemed unprotected under the present federal scheme, the Florida
statute conflicts with the "strong federal policy favoring free
competition in ideas which do not merit patent protection." Lear, Inc., 395 U.S. at 395 U. S. 656 .
We therefore agree with the majority of the Florida Supreme Court
that the Florida statute is preempted by the Supremacy Clause, and
the judgment of that court is hereby affirmed. It is so ordered. * In some respects, the protection accorded by the Florida
statute resembles that of a so-called "product-by-process" patent.
Such a claim "is one in which the product is defined at least in
part in terms of the method or process by which it is made." D.
Chisum, Patents § 8.05, p. 8-67 (1988). As long as the end product
of the process is adequately defined and novel and nonobvious, a
patent in the process may support a patent in the resulting
product. See U.S. Patent and Trademark Office, Manual of
Patent Examining Procedure § 706.03(e) (5th rev. ed.1986) ("An
article may be claimed by a process of making it provided it is
definite"). The Florida statute at issue here grants boat hull
manufacturers substantial control over the use of a particular
process and the sale of an article created by that process without
regard to the novelty or nonobviousness of either the end product
or the process by which it was created. Under federal law, this
type of protection would be unavailable to petitioner absent
satisfaction of the requirements of patentability. See In re
Thorpe, 777 F.2d 695, 697 (CA Fed.1985) (product-by-process
patent properly denied where end result was indistinguishable from
prior art).

Summary: The Supreme Court of the United States held that a Florida statute prohibiting the duplication and sale of unpatented boat hulls through a direct molding process was preempted by the Supremacy Clause as it conflicted with federal patent law and its goal of promoting free competition in unpatented ideas and designs. The Court affirmed the judgment of the Florida Supreme Court, finding that the state law interfered with the enjoyment of publicly known, unpatented conceptions and that creating patent-like rights at the state level could disrupt the balance of the federal patent system.


OCTOBER TERM, 1998

															Syllabus

															PFAFF v. WELLS ELECTRONICS, INC.

															CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL
CIRCUIT

															No. 97-1130. Argued October 6, 1998-Decided November 10,
1998

															Under § 102(b) of the Patent Act of 1952, no one can patent an
"invention" that has been "on sale" more than one year before
filing a patent application. In early 1981, petitioner Pfaff
designed a new computer chip socket and sent detailed engineering
drawings of the socket to a manufacturer. He also showed a sketch
of his concept to representatives of Texas Instruments, which
placed an order for the new sockets prior to April 8, 1981. In
accord with his normal practice, Pfaff did not make and test a
prototype before offering to sell the socket in commercial
quantities. He filled the order in July 1981, and thus the evidence
indicates that he first reduced his invention to practice that
summer. He applied for a patent on April 19, 1982, making April 19,
1981, the critical date for § 102(b)'s on-sale bar. After the
patent issued, he lost an infringement action he filed against
respondent, Wells Electronics, Inc. Subsequently, he brought this
suit, alleging that a modified version of Wells' socket infringed
six of his patent's claims. The District Court held, inter
alia, that three of the claims were infringed, rejecting Wells'
§ 102(b) defense on the ground that Pfaff had filed the patent
application less than a year after reducing the invention to
practice. In reversing, the Court of Appeals concluded, among other
things, that § 102(b)'s I-year period began to run when the
invention was offered for sale commercially, not when it was
reduced to practice. Held: Pfaff's patent is invalid because the invention had
been on sale for more than one year in this country before he filed
his patent application. Pp. 60-69.

															(a) The primary meaning of "invention" in the Patent Act
unquestionably refers to the inventor's conception rather than to a
physical embodiment of that idea. The statute contains no express
"reduction to practice" requirement, see §§ 100, 101, 102(g), and
it is well settled that an invention may be patented before it is
reduced to practice. In The Telephone Cases, 126 U. S. 1 , 535-536, this
Court upheld a patent issued to Alexander Graham Bell even though
he had filed his application before constructing a working
telephone. Applying the reasoning of The Telephone Cases to
the facts of this case, it is evident that Pfaff could have
obtained a patent when he accepted Texas Instruments' order, for at
that time he provided the manufacturer with a description 56 Syllabus

															and drawings of "sufficient clearness and preCISIon to enable
those skilled in the matter" to produce the device, id., at 536.
Pp. 60-63.

															(b) Pfaff's nontextual argument-that longstanding precedent,
buttressed by the interest in providing inventors with a clear
standard identifying the onset of the I-year period, justifies a
special interpretation of "invention" in § 102(b)-is rejected.
While reduction to practice provides sufficient evidence that an
invention is complete, the facts of The Telephone Cases and
this case show that such proof is not necessary in every case. Pp.
63-66.

															(c) The on-sale bar applies when two conditions are satisfied
before the critical date. First, the product must be the subject of
a commercial offer for sale. Here, the acceptance of the purchase
order prior to April 8, 1981, makes it clear that such an offer had
been made, and there is no question that the sale was commercial.
Second, the invention must be ready for patenting. That condition
may be satisfied in at least two ways: by proof of reduction to
practice before the critical date; or by proof that prior to the
critical date the inventor had prepared drawings or other
descriptions of the invention that were sufficiently specific to
enable a person skilled in the art to practice the invention. This
condition is satisfied here because the drawings sent to the
manufacturer before the critical date fully disclosed the
invention. Pp.67-69. 124 F.3d
1429 , affirmed.

															STEVENS, J., delivered the opinion for a unanimous Court. Jerry R. Selinger argued the cause for petitioner. With
him on the briefs were Susan E. Powley and Jack A.
Kanz. C. Randall Bain argued the cause for respondent. With him on the
brief were Alan H. Blankenheimer, Patricia A. Hubbard, C. Mark
Kittredge, and James D. Hall.

															Jeffrey P. Minear argued the cause for the United States as
amicus curiae urging affirmance. With him on the brief were
Solicitor General Waxman, Assistant Attorneys General Hunger and
Klein, Deputy Solicitor General Wallace, William Kanter, Alfred
Mollin, David Siedman, Mark S. Popofsky, Nancy J. Linck, and Albin
F. Drost. *

															*Briefs of amici curiae urging reversal were filed for
Global Gaming Technology, Inc., by Joseph M. Vanek; for the
American Intellectual Prop- 57 JUSTICE STEVENS delivered the opinion of the Court. Section
102(b) of the Patent Act of 1952 provides that no person is
entitled to patent an "invention" that has been "on sale" more than
one year before filing a patent application.1 We granted certiorari
to determine whether the commercial marketing of a newly invented
product may mark the beginning of the i-year period even though the
invention has not yet been reduced to practice.2

															I

															On April 19, 1982, petitioner, Wayne Pfaff, filed an application
for a patent on a computer chip socket. Therefore, April 19, 1981,
constitutes the critical date for purposes of the on-sale bar of 35
U. S. C. § 102(b); if the i-year period

															erty Law Association by Robert H. Fischer, Gary L. Griswold,
Robert L. Baechtold, and J. Michael Jakes; for the Federal Circuit
Bar Association by George E. Hutchinson, Denise W DeFranco, and
James F. McKeown.

															Briefs of amici curiae urging affirmance were filed for
View Engineering, Inc., by Ernie L. Brooks and Frank A.
Angileri; for the Dallas-Fort Worth Intellectual Property Law
Association by D. Scott Hemingway and Louis Touton; for the Mas-Hamilton Group by David E. Schmit; and for the
Patent, Trademark & Copyright Section of the Bar Association of
the District of Columbia by Bruce T. Wieder. 1 "A person shall be entitled to a patent unless-

															"(b) the invention was patented or described in a printed
publication in this or a foreign country or in public use or on
sale in this country, more than one year prior to the date of the
application for patent in the United States, or .... " 35 U. S. C.
§ 102.

															2 "A process is reduced to practice when it is successfully
performed. A machine is reduced to practice when it is assembled,
adjusted and used. A manufacture is reduced to practice when it is
completely manufactured. A composition of matter is reduced to
practice when it is completely composed." Corona Cord Tire
Co. v. Dovan Chemical Corp., 276 U. S. 358 , 383
(1928). 58 began to run before that date, Pfaff lost his right to patent
his invention.

															Pfaff commenced work on the socket in November 1980, when
representatives of Texas Instruments asked him to develop a new
device for mounting and removing semiconductor chip carriers. In
response to this request, he prepared detailed engineering drawings
that described the design, the dimensions, and the materials to be
used in making the socket. Pfaff sent those drawings to a
manufacturer in February or March 1981.

															Prior to March 17, 1981, Pfaff showed a sketch of his concept to
representatives of Texas Instruments. On April 8, 1981, they
provided Pfaff with a written confirmation of a previously placed
oral purchase order for 30,100 of his new sockets for a total price
of $91,155. In accord with his normal practice, Pfaff did not make
and test a prototype of the new device before offering to sell it
in commercial quantities.3

															The manufacturer took several months to develop the customized
tooling necessary to produce the device, and Pfaff did not fill the
order until July 1981. The evidence therefore indicates that Pfaff
first reduced his invention to practice in the summer of 1981. The
socket achieved substantial com-

															3 At his deposition, respondent's counsel engaged in the
following colloquy with Pfaff:

															"Q. Now, at this time [late 1980 or early 1981] did we [sic]
have any

															prototypes developed or anything of that nature, working
embodiment?

															"A. No.

															"Q. It was in a drawing. Is that correct?

															"A. Strictly in a drawing. Went from the drawing to the hard
tooling.

															That's the way I do my business.

															"Q. 'Boom-boom'? "A. You got it.

															"Q. You are satisfied, obviously, when you come up with some
drawings that it is going to go-'it works'?

															"A. I know what I'm doing, yes, most of the time."
App.96-97. 59 mercial success before Patent No. 4,491,377 ('377 patent) issued
to Pfaff on January 1, 1985.4

															After the patent issued, petitioner brought an infringement
action against respondent, Wells Electronics, Inc., the
manufacturer of a competing socket. Wells prevailed on the basis of
a finding of no infringement.5 When respondent began to market a
modified device, petitioner brought this suit, alleging that the
modifications infringed six of the claims in the '377 patent.

															After a full evidentiary hearing before a Special Master,6 the
District Court held that two of those claims (1 and 6) were invalid
because they had been anticipated in the prior art. Nevertheless,
the court concluded that four other claims (7, 10, 11, and 19) were
valid and three (7, 10, and 11) were infringed by various models of
respondent's sockets. App. to Pet. for Cert. 21a-22a. Adopting the
Special Master's findings, the District Court rejected respondent's
§ 102(b) defense because Pfaff had filed the application for the
'377 patent less than a year after reducing the invention to
practice.

															The Court of Appeals reversed, finding all six claims invalid. 124 F.3d
1429 (CA Fed. 1997). Four of the claims (1, 6,7, and 10)
described the socket that Pfaff had sold to Texas Instruments prior
to April 8, 1981. Because that device had been offered for sale on
a commercial basis more than one

															4 Initial sales of the patented device were: 4 Initial sales of the patented device
were:

1981....................................................................................................
$   350,000

1982....................................................................................................
$   937,000

1983....................................................................................................
$2,800,000

1984....................................................................................................
$3,430,000

															App. to Pet. for Cert. 223a.

															5 Pfaffv. Wells Electronics, Inc., 9 USPQ 2d 1366 (ND
Ind. 1988). The court found that the Wells device did not literally
infringe on Pfaff's '377 patent based on the physical location of
the sockets' conductive pins.

															6 Initially the District Court entered summary judgment in favor
of respondent, but the Court of Appeals reversed and remanded for
trial because issues of fact were in dispute. See 5 F.3d
514 (CA Fed. 1993). 60 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
i-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. 1. 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." 61 N either the statutory definition of the term in § 1008 nor the
basic conditions for obtaining a patent set forth in § 1019 make
any mention of "reduction to practice." The statute's only specific
reference to that term is found in § 102(g), which sets forth the
standard for resolving priority contests between two competing
claimants to a patent. That subsection provides: "In determining priority of invention there shall be considered
not only the respective dates of conception and reduction to
practice of the invention, but also the reasonable diligence of one
who was first to conceive and last to reduce to practice, from a
time prior to conception by the other." Thus, assuming diligence on the part of the applicant, it is
normally the first inventor to conceive, rather than the first to
reduce to practice, who establishes the right to the patent.

															It is well settled that an invention may be patented before it
is reduced to practice. In 1888, this Court upheld a patent issued
to Alexander Graham Bell even though he had filed his application
before constructing a working telephone. Chief Justice Waite's
reasoning in that case merits quoting at length: "It is quite true that when Bell applied for his patent he had
never actually transmitted telegraphically spoken words so that
they could be distinctly heard and understood at the receiving end
of his line, but in his specification he did describe accurately
and with admirable clearness his process, that is to say, the
exact 8Title 35 U. S. C. § 100, "Definitions," states:

															"When used in this title unless the context otherwise
indicates"(a) The term 'invention' means invention or discovery
.... "

															9 Section 101, "Inventions patentable," provides: "Whoever
invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title." 62 electrical condition that must be created to accomplish his
purpose, and he also described, with sufficient precision to enable
one of ordinary skill in such matters to make it, a form of
apparatus which, if used in the way pointed out, would produce the
required effect, receive the words, and carry them to and deliver
them at the appointed place. The particular instrument which he
had, and which he used in his experiments, did not, under the
circumstances in which it was tried, reproduce the words spoken, so
that they could be clearly understood, but the proof is abundant
and of the most convincing character, that other instruments,
carefully constructed and made exactly in accordance with the
specification, without any additions whatever, have operated and
will operate successfully. A good mechanic of proper skill in
matters of the kind can take the patent and, by following the
specification strictly, can, without more, construct an apparatus
which, when used in the way pointed out, will do all that it is
claimed the method or process will do .... "The law does not require that a discoverer or inventor, in
order to get a patent for a process, must have succeeded in
bringing his art to the highest degree of perfection. It is enough
if he describes his method with sufficient clearness and precision
to enable those skilled in the matter to understand what the
process is, and if he points out some practicable way of putting it
into operation." The Telephone Cases, 126 U. S. 1 , 535-536
(1888).10 When we apply the reasoning of The Telephone Cases to the
facts of the case before us today, it is evident that Pfaff

															10 This Court has also held a patent invalid because the
invention had previously been disclosed in a prior patent
application, although that application did not claim the invention
and the first invention apparently had not been reduced to
practice. Alexander Milburn Co. v. DavisBournonville
Co., 270 U. S.
390 , 401-402 (1926). 63 could have obtained a patent on his novel socket when he
accepted the purchase order from Texas Instruments for 30,100
units. At that time he provided the manufacturer with a description
and drawings that had "sufficient clearness and precision to enable
those skilled in the matter" to produce the device. Id., at
536. The parties agree that the sockets manufactured to fill that
order embody Pfaff's conception as set forth in claims 1, 6, 7, and
10 of the '377 patent. We can find no basis in the text of § 102(b)
or in the facts of this case for concluding that Pfaff's invention
was not "on sale" within the meaning of the statute until after it
had been reduced to practice.

															III

															Pfaff nevertheless argues that longstanding precedent,
buttressed by the strong interest in providing inventors with a
clear standard identifying the onset of the i-year period,
justifies a special interpretation of the word "invention" as used
in § 102(b). We are persuaded that this nontextual argument should
be rejected.

															As we have often explained, most recently in Bonito Boats,
Inc. v. Thunder Craft Boats, Inc., 489 U. S. 141 , 151
(1989), the patent system represents a carefully crafted bargain
that encourages both the creation and the public disclosure of new
and useful advances in technology, in return for an exclusive
monopoly for a limited period of time. The balance between the
interest in motivating innovation and enlightenment by rewarding
invention with patent protection on the one hand, and the interest
in avoiding monopolies that unnecessarily stifle competition on the
other, has been a feature of the federal patent laws since their
inception. As this Court explained in 1871: "Letters patent are not to be regarded as monopolies ... but as
public franchises granted to the inventors of new and useful
improvements for the purpose of securing to them, as such
inventors, for the limited term therein 64 mentioned, the exclusive right and liberty to make and use and
vend to others to be used their own inventions, as tending to
promote the progress of science and the useful arts, and as matter
of compensation to the inventors for their labor, toil, and expense
in making the inventions, and reducing the same to practice for the
public benefit, as contemplated by the Constitution and sanctioned
by the laws of Congress." Seymour v. Osborne, 11
Wall. 516, 533-534. Consistent with these ends, § 102 of the Patent Act serves as a
limiting provision, both excluding ideas that are in the public
domain from patent protection and confining the duration of the
monopoly to the statutory term. See, e. g., Frantz Mfg.
Co. v. Phenix Mfg. Co., 457 F.2d
314 , 320 (CA7 1972).

															We originally held that an inventor loses his right to a patent
if he puts his invention into public use before filing a patent
application. "His voluntary act or acquiescence in the public sale
and use is an abandonment of his right." Pennock v. Dialogue, 2 Pet. 1, 24 (1829) (Story, J.). A similar
reluctance to allow an inventor to remove existing knowledge from
public use undergirds the on-sale bar.

															Nevertheless, an inventor who seeks to perfect his discovery may
conduct extensive testing without losing his right to obtain a
patent for his invention-even if such testing occurs in the public
eye. The law has long recognized the distinction between inventions
put to experimental use and products sold commercially. In 1878, we
explained why patentability may turn on an inventor's use of his
product. "It is sometimes said that an inventor acquires an undue
advantage over the public by delaying to take out a patent,
inasmuch as he thereby preserves the monopoly to himself for a
longer period than is allowed by the policy of the law; but this
cannot be said with justice when the 65 delay is occasioned by a bona fide effort to bring his
invention to perfection, or to ascertain whether it will answer the
purpose intended. His monopoly only continues for the allotted
period, in any event; and it is the interest of the public, as well
as himself, that the invention should be perfect and properly
tested, before a patent is granted for it. Any attempt to use it
for a profit, and not by way of experiment, for a longer period
than two years before the application, would deprive the inventor
of his right to a patent." Elizabeth v. Pavement Co., 97 U. S. 126 , 137
(emphasis added). The patent laws therefore seek both to protect the public's
right to retain knowledge already in the public domain and the
inventor's right to control whether and when he may patent his
invention. The Patent Act of 1836, 5 Stat. 117, was the first
statute that expressly included an on-sale bar to the issuance of a
patent. Like the earlier holding in Pennock, that provision
precluded patentability if the invention had been placed on sale at
any time before the patent application was filed. In 1839, Congress
ameliorated that requirement by enacting a 2-year grace period in
which the inventor could file an application. 5 Stat. 353.

															In Andrews v. Hovey, 123 U. S. 267 , 274
(1887), we noted that the purpose of that amendment was "to fix a
period of limitation which should be certain"; it required the
inventor to make sure that a patent application was filed "within
two years from the completion of his invention," ibid. In
1939, Congress reduced the grace period from two years to one year.
53 Stat. 1212.

															Petitioner correctly argues that these provisions identify an
interest in providing inventors with a definite standard for
determining when a patent application must be filed. A rule that
makes the timeliness of an application depend on the date when an
invention is "substantially complete" se- 66 riously undermines the interest in certainty.ll Moreover, such a
rule finds no support in the text of the statute. Thus,
petitioner's argument calls into question the standard applied by
the Court of Appeals, but it does not persuade us that it is
necessary to engraft a reduction to practice element into the
meaning of the term "invention" as used in § l02(b).

															The word "invention" must refer to a concept that is complete,
rather than merely one that is "substantially complete." It is true
that reduction to practice ordinarily provides the best evidence
that an invention is complete. But just because reduction to
practice is sufficient evidence of completion, it does not follow
that proof of reduction to practice is necessary in every case.
Indeed, both the facts of The Telephone Cases and the facts
of this case demonstrate that one can prove that an invention is
complete and ready for patenting before it has actually been
reduced to practice.12

															11 The Federal Circuit has developed a multifactor, "totality of
the circumstances" test to determine the trigger for the on-sale
bar. See, e. g., Micro Chemical, Inc. v. Great
Plains Chemical Co., 103 F.3d
1538 , 1544 (1997) (stating that, in determining whether an
invention is on sale for purposes of § 102(b), "'all of the
circumstances surrounding the sale or offer to sell, including the
stage of development of the invention and the nature of the
invention, must be considered and weighed against the policies
underlying section 102(b)' "); see also UMC Electronics Co. v. United States, 816 F.2d
647 , 656 (1987) (stating the on-sale bar "does not lend itself
to formulation into a set of precise requirements"). As the Federal
Circuit itself has noted, this test "has been criticized as
unnecessarily vague." Seal-Flex, Inc. v. Athletic
Track & Court Construction, 98
F.3d 1318 , 1323, n. 2 (1996).

															12 Several of this Court's early decisions stating that an
invention is not complete until it has been reduced to practice are
best understood as indicating that the invention's reduction to
practice demonstrated that the concept was no longer in an
experimental phase. See, e. g., Seymour v. Osborne, 11 Wall. 516, 552 (1871) ("Crude and imperfect
experiments are not sufficient to confer a right to a patent; but
in order to constitute an invention, the party must have proceeded
so far as to have reduced his idea to practice, and embodied it in
some distinct form"); Clark Thread 67 We conclude, therefore, that the on-sale bar applies when two
conditions are satisfied before the critical date.

															First, the product must be the subject of a commercial offer for
sale. An inventor can both understand and control the timing of the
first commercial marketing of his invention. The experimental use
doctrine, for example, has not generated concerns about
indefiniteness,13 and we perceive no reason why unmanageable
uncertainty should attend a rule that measures the application of
the on-sale bar of § 102(b) against the date when an invention that
is ready for patenting is first marketed commercially. In this case
the acceptance of the purchase order prior to April 8, 1981, makes
it clear that such an offer had been made, and there is no question
that the sale was commercial rather than experimental in
character.

															Second, the invention must be ready for patenting. That
condition may be satisfied in at least two ways: by proof of
reduction to practice before the critical date; or by proof that
prior to the critical date the inventor had prepared drawings or
other descriptions of the invention that were sufficiently specific
to enable a person skilled in the art to Co. v. Willimantic Linen Co., 140 U. S. 481 , 489 (1891)
(describing how inventor continued to alter his thread winding
machine until July 1858, when "he put it in visible form in the
shape of a machine .... It is evident that the invention was not
completed until the construction of the machine"); Corona Cord
Tire Co. v. Dovan Chemical Corp., 276 U. S., at 382-383
(stating that an invention did not need to be subsequently
commercialized to constitute prior art after the inventor had
finished his experimentation. "It was the fact that it would work
with great activity as an accelerator that was the discovery, and
that was all, and the necessary reduction to use is shown by
instances making clear that it did so work, and was a completed
discovery").

															13 See, e. g., Rooklidge & Jensen, Common Sense,
Simplicity and Experimental U se Negation of the Public Use and On
Sale Bars to Patentability, 29 John Marshall L. Rev. 1, 29 (1995)
(stating that "whether a particular activity is experimental is
often clear"). 68 practice the invention.14 In this case the second condition of
the on-sale bar is satisfied because the drawings Pfaff sent to the
manufacturer before the critical date fully disclosed the
invention.

															The evidence in this case thus fulfills the two essential
conditions of the on-sale bar. As succinctly stated by Learned
Hand: "[I]t is a condition upon an inventor's right to a patent that
he shall not exploit his discovery competitively after it is ready
for patenting; he must content himself with either secrecy, or
legal monopoly." Metallizing Engineering Co. v. Kenyon
Bearing & Auto Parts Co., 153 F.2d 516, 520 (CA2
1946). The judgment of the Court of Appeals finds support not only in
the text of the statute but also in the basic policies underlying
the statutory scheme, including § 102(b). When Pfaff accepted the
purchase order for his new sockets prior to April 8, 1981, his
invention was ready for patenting. The fact that the manufacturer
was able to produce the socket using his detailed drawings and
specifications demonstrates this fact. Furthermore, those sockets
contained all the elements of the invention claimed in the '377
patent. Therefore, Pfaff's '377 patent is invalid because the
invention had

															14 The Solicitor General has argued that the rule governing the
on-sale bar should be phrased somewhat differently. In his opinion,
"if the sale or offer in question embodies the invention for which
a patent is later sought, a sale or offer to sell that is primarily
for commercial purposes and that occurs more than one year before
the application renders the invention unpatentable. Seal-Flex,
Inc. v. Athletic Track and Court Constr., 98 F.3d
1318 , 1325 (Fed. Cir. 1996) (Bryson, J., concurring in part and
concurring in the result)." Brieffor United States as Amicus
Curiae 10-11 (internal quotation marks omitted). It is true
that evidence satisfying this test might be sufficient to prove
that the invention was ready for patenting at the time of the sale
if it is clear that no aspect of the invention was developed after
the critical date. However, the possibility of additional
development after the offer for sale in these circumstances
counsels against adoption of the rule proposed by the Solicitor
General. 69 been on sale for more than one year in this country before he
filed his patent application. Accordingly, the judgment of the
Court of Appeals is affirmed.

															It is so ordered.

Summary:
Here is a summary of the Supreme Court case Pfaff v. Wells Electronics, Inc.:

Issue: Whether an invention is ready for patenting when it is offered for sale to the public, or only once it has been reduced to practice.

Holding: The Supreme Court held that an invention is ready for patenting when it is offered for sale, even if it has not yet been reduced to practice. In this case, Pfaff's invention was found to be ready for patenting when he accepted a purchase order for his new computer chip socket, as the manufacturer was able to produce the socket using his detailed drawings and specifications. The Court affirmed the Court of Appeals' decision, finding that Pfaff's patent was invalid because the invention had been on sale for more than one year before he filed his patent application.