On January 22, the Supreme Court clarified an important issue of patent law that had been left open since the enactment of the America Invents Act several years ago.
The patent laws bar a person from receiving a patent on an invention that was “on sale” before the effective filing date of the patent application claiming that invention. The Supreme Court had previously announced that the “on sale bar” came into effect when the invention was “the subject of a commercial offer for sale” and was “ready for patenting”—that is, it must be sufficiently developed that a patent application could be filed, and there must be a commercial offer for sale. If these conditions are met, the offer can bar a subsequent patent application. The appeals court confirmed that this is true even when the offer for sale was confidential.
The AIA, however, changed slightly the “on sale” language in the patent statute, opening the door to arguments that “secret sales” would no longer bar patent applications.
In the Helsinn case, these new arguments were raised, but not answered by the appeals court. With many amici filed, the Supreme Court took up the question and answered it unanimously: so-called “secret sales” are prior art that may bar patenting. While potentially narrowing the scope of what can be patented, this decision provides clarity and certainty that inventors and the patent bar have been calling for.
