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Supreme Court Affirms that a “Secret Sale” is “On Sale” Under the AIA

Posted on Jan 29, 2019 in Blog

In Helsinn Healthcare v. Teva Pharmaceuticals USA, No. 17-1229 (Jan. 22, 2019), the Supreme Court unanimously affirms the Federal Circuit’s decision that “secret sales” are sales within the meaning of the “on sale” bar under the AIA.  As the Supreme Court explains, the AIA retains the pre-AIA “on sale” bar on patent rights for sales made more than one year prior to the effective filing date of the U.S. patent application.  The addition of the catchall phrase “or otherwise available to the public” after “on sale” in 35 U.S.C. §102(a)(1) does not alter the meaning of “on sale.”  Thus, like pre-AIA, “on sale” under the AIA includes “secret sales.”

For a fuller discussion of the “on sale” bar and what this may mean to patentees see Larry Ashery’s article: The Risk of Losing Patent Rights When an Invention is “On Sale”.

– By Pei-Ru Wey

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