Prior to the America Invents Act (AIA), it was well settled that a sale did not need to inform the public of the details of an invention or the sale itself be public to preclude patentability. The AIA amended 35 U.S.C. §102 to provide “[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.” Many observers argued that the inclusion of “or otherwise available to the public” did not change the meaning of “on sale,” while others, including the U.S. Patent and Trademark Office, concluded that the AIA amendments require a sale to make the invention available to the public to be prior art.

In the Federal Circuit addressed the on-sale bar under the AIA for the first time. The panel held that when the existence of a sale is public, the details of the invention do not need to be publicly disclosed for the sale to be prior art. The panel’s decision, however, avoided resolving the central issue—whether the AIA changed the meaning of “on sale.”

Following Helsinn’s submission of its petition for rehearing, the Boston Patent Law Association (BPLA) filed an brief to encourage the Federal Circuit to rehear the case The BPLA brief does not take a position on whether the meaning of “on sale” changed. Rather, the BPLA urges the court to seize this opportunity to provide clear guidance on whether the meaning of “on sale” as used in 35 U.S.C. §102(a) retains the same meaning that “on sale” had prior to the AIA. In support of its position, the BPLA highlights the substantial confusion regarding the effect of the AIA amendments on the meaning of “on sale” and emphasizes the importance to all participants in the patent system of being able to determine what is prior art. Further, the BPLA argues that this is the proper case for rehearing on this issue.

As reported by Law360, the BPLA is one of several IP groups that submitted briefs in this case, including the Intellectual Property Owners Association, American Intellectual Property Law Association, Pharmaceutical Research and Manufacturers of America, and Biotechnology Innovation Organization.

A copy of the BPLA brief is provided .