In
Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc.
, a Federal Circuit panel for the first time addressed the meaning of “on sale” in 35 U.S.C. § 102(a) after the America Invents Act (AIA). Prior to the AIA, 35 U.S.C. § 102 provided that “[a] person shall be entitled to a patent unless . . . (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.” The AIA amended the prior art provisions of section 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.” Helsinn
presented the Federal Circuit with the first opportunity to address whether the AIA amendments changed the meaning of “on sale” in any way.
In a narrow decision, the Federal Circuit panel held the AIA amendments did not change the meaning of “on sale” to require that a sale make available to the public the invention itself in order to qualify as “on sale” prior art. The panel, however, failed to address whether the AIA changed the meaning of “on sale” in any way, including whether secret sales could be prior art post AIA. Helsinn sought rehearing
en banc,
which the Federal Circuit denied.
Helsinn has now filed a petition for certiorari. Helsinn’s petition frames the Question Presented to the Supreme Court as the following:
Whether, under the Leahy-Smith America Invents Act, an inventor’s sale of an invention to a third party that is obligated to keep the invention confidential qualifies as prior art for purposes of determining the patentability of the invention.
In its petition, Helsinn argues that the AIA amendment did change the meaning of “on sale.” Specifically, Helsinn argues that a sale must make public the details of the claimed invention to be “on sale” prior art after the AIA. Several amici curiae have filed briefs supporting this position, including Congressman Lamar Smith, co-sponsor of the AIA.
As it did in support of rehearing
en banc
at the Federal Circuit, the BPLA filed an amicus brief in support of neither party that advocates for granting certiorari to provide timely guidance on the meaning of “on-sale” under the AIA. In the brief, the BPLA urges the Supreme Court to make clear 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. Further, the BPLA encourages the court to establish a framework under which to analyze whether an invention is “on sale,” if the Court decides the meaning has changed. In support of its position, the BPLA highlights the substantial confusion regarding the effect of the AIA amendments on the meaning of “on sale,” including the additional confusion introduced by the Federal Circuit’s denial of rehearing and related concurrence. The BPLA also emphasizes the importance of this issue of patent law and how it affects all participants in the patent system.The BPLA Files Amicus Curiae Brief
in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc.
By
Ronald E. Cahill
and Micah W. Miller, Nutter McClennen & Fish LLP
