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

Jan 9, 2019

Supreme Court Hears Arguments on On-Sale Bar for Patentability

On-Sale Bar for Patentability

Does a secret sale of a patented invention that occurred before the filing of a patent application count as invalidating prior art? That question was the recent focus of oral arguments before the Supreme Court recently in the case of Helsinn Healthcare S.A. v. Teva Pharmaceutical USA. Before the passage of the America Invents Act (“AIA”) in 2011, the question had been well settled. Section 102 of the Patent Act, defining conditions for patentability, stated that a person was entitled to a patent for an invention unless the invention was “in public use or on sale in this country, more… 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