Did the America Invents Act (AIA) change the Patent On-sale bar?

By Matthew J. Booth

The U.S Supreme Court heard oral arguments last month regarding whether the America Invents Act changed the definition of the on-sale bar for patents. Before the AIA, the on-sale bar meant that an applicant for a patent could not have sold or attempted to sell the claimed invention before the filing of a patent application. In most situations, however, there was 1-year grace period from the sale or attempted sale date for an applicant to file the patent application so that sale would not be considered prior art. Any patent application covering that invention that was filed after that 1-year grace period would be considered invalid.

The pre-AIA section read:

35 USC 102 35 U.S.C. 102 (PRE‑AIA) CONDITIONS FOR PATENTABILITY; NOVELTY AND LOSS OF RIGHT TO PATENT.
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 the application for patent in the United States, or …

The AIA changed the statutory language around “on sale” and this section now reads:

35 USC 102
(a) NOVELTY; PRIOR ART.— A person shall be entitled to a patent unless—
(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; …

Ever since the AIA came into effect, there has been some questions in the Patent community about whether the new language changed the prior interpretation of the on-sale bar and that now “private” sales to third parties were no longer considered prior art (or did not start the count on the 1-year grace period). A case has made it to the Supreme Court that will hopefully give us some clarity regarding this issue.

The case is Helsinn Healthcare SA v. Teva Pharmaceuticals USA Inc., No. 17-1229. This case is worth keeping an eye on as it may change the filing strategies for patent applications that come out of research agreements, joint development agreements, or manufacturing agreements.

Link to case