By Matthew J. Booth
A couple of weeks ago I wrote about whether the America Invents Act (AIA) changed the Patent On-Sale bar. The US Supreme Court answered this question in a short, unanimous opinion by Justice Thomas, with the answer being, no, the AIA did not change the Patent On-Sale bar.
In its review of the case, the Court said that since the term “on sale” was both in the earlier version of the statute and the current version of the statute, Congress intended for the term to have the same construction used by the Supreme Court. The Court further found that the addition of the term “or otherwise available to the public” was not enough of a change to the meaning of “on sale” for the Court to conclude that Congress wanted to alter its meaning.
Seeing such a strong judicial takedown by the Supreme Court on anything is always a bit of a jaw dropper. Clearly, the Court was not impressed with the appeal.
I think an interesting tidbit in this opinion is that the Court looked favorably on the Federal Court’s (the lower court for patent appeals) case law on “secret sales” invalidating patents. While not an express holding, this language seems to indicate that all “secret sales” occurring more than one year prior to the date of the application will invalidate a patent.
The practical tip coming from this case is to always file patent applications before selling or licensing technology.
The case is Helsinn Healthcare SA v. Teva Pharmaceuticals USA Inc., US, No. 17-1229 (01/22/2019).
