The U.S. Supreme Court in June agreed to hear an appeal from Helsinn Healthcare SA, in a case that gives the justices a chance to provide guidance about the scope of the on-sale bar in the wake of the America Invents Act.
The on-sale bar is a provision of patent law holding that sales of an invention that occur more than a year before a patent application is filed are prior art that can be used to invalidate a patent. For decades, courts have held that the bar kicks in even when the sales are confidential.
“From a practical perspective, it’s important to know because it affects the way a lot of companies would do business,” Leigh Martinson of McCarter & English LLP said.
Martinson noted that the AIA in many respects was meant to bring the U.S. patent system in line with other parts of the world. And in other countries, the sale of a patented product isn’t invalidating unless it divulges the invention.
“This issue is interesting because of the legislative history and what the intent was of the AIA,” he said.