Feb 21, 2019

Legal Update: On-Sale Bar Applies to Secret Sales


On January 22, 2019, the Supreme Court held that amendments by the America Invents Act (AIA) to the U.S. Patent Act did not exclude secret sales from the on-bar sale doctrine, meaning such sales that occur before a patent’s filing can lead to its invalidation. The issue was whether the amendment that added the phrase “or otherwise available to the public” changed the meaning of “on sale”, such that the claimed invention of the sale itself had to be publicly disclosed in order for the sale to be an invalidating prior art event. (Read the original article on this topic.)… Read more

Aug 15, 2017

No Right to a Jury Trial for Attorney Fee Awards Under 35 U.S. Code § 285

Patent Law Book

Section 285 of the Patent Act provides: “The court in exceptional cases may award reasonable attorney fees to the prevailing party.”  But, does the Seventh Amendment require a jury trial to decide the facts forming the basis of an award of attorney’s fees under § 285 of the Patent Act?  In AIA America v. Avid Radiopharma (Fed. Cir. 2017), the Federal Circuit has ruled that the factual basis for an attorney fee award need not be decided by a jury — affirming a $4 million fee award that followed a jury trial on the sole issue of whether the plaintiff… Read more

May 10, 2017

The On-Sale Bar for Patents Could be Available for Private Sales under AIA

Patent Law Book

Last week, in Helsinn Healthcare SA v. Teva Pharmaceuticals USA Inc., the Court of Appeals for the Federal Circuit (“CAFC”) ruled that the America Invents Act’s on-sale bar provision renders patents invalid if the invention was sold prior to patenting, even if the sale did not publicly disclose the invention. The on-sale bar invalidates a patent if the claimed invention is sold more than a year prior to the filing of the patent application. Prior to the AIA, federal courts held that all sales, confidential and public, triggered the on-sale bar. The AIA, effective on patents filed after March 16,… Read more