Monthly Minute | Commercialization of an Invention
Squib of Holding and Key Implication: The United States Supreme Court, in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., held on January 22, 2019 that "a commercial sale to a third party who is required to keep...more
Helsinn confirmed that the AIA did not alter the meaning of the “on-sale” bar. In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc, the Supreme Court addressed whether a confidential sale of an invention to a...more
Originally published in The Journal Record | January 31, 2019. This month, the U.S. Supreme Court issued its opinion in Helsinn Healthcare v. Teva Pharmaceuticals, confirming that private sales of an invention may preclude...more
On Tuesday, January 22, 2019, the U.S. Supreme Court held in a unanimous decision that, even where the details of the invention are kept confidential, a commercial sale may place the invention “on sale” under the Leahy-Smith...more
In a 9-0 decision today, the Supreme Court affirmed the Federal Circuit decision in Helsinn Healthcare S. A. v. Teva Pharmaceuticals USA, Inc., 855 F. 3d 1356 (Fed. Cir. 2017). The Supreme Court held that the AIA’s revision...more
The U.S. Supreme Court may soon resolve an issue that has sparked much debate since the enactment of the Leahy-Smith America Invents Act — namely, whether under the AIA, an inventor’s sale of an invention to a third party...more
In the August 2018 edition of Hogan Lovells’ Standard Essential Patent (SEP) Update, we report on recent news and case decisions from China, Germany, the United Kingdom, and the United States. This bi-monthly newsletter...more
The US Supreme Court granted certiorari to consider the question of whether, under the America Invents Act, an inventor’s sale of an invention to a third party that is obligated to keep the invention confidential qualifies as...more
The prominent state of patent litigation in the United States and Germany is due not only to the size of its markets, but also to a recent increase in hearings before the U.S. International Trade Commission and the Patent...more
On June 25, 2018, the United States Supreme Court agreed to review the Federal Circuit's decision in Helsinn Healthcare v. Teva Pharmaceuticals, No. 17-1229. In Helsinn, the Federal Circuit considered whether the America...more
2017 saw a bumper crop of Supreme Court decisions on intellectual property matters around the world including eight by the United States Supreme Court, two by the Canadian Supreme Court, and two by the United Kingdom Supreme...more
The US Court of Appeals for the Federal Circuit reversed the district court and found that a Supply and Purchase Agreement between Helsinn and third-party MGI Pharma, Inc. (MGI) before the critical date of the asserted...more
Contrary to USPTO guidance, invention details need not be publicly disclosed to trigger on-sale bar for AIA patents. The Leahy-Smith America Invents Act (AIA)1 is widely considered the most significant overhaul of US...more
The Court of Appeals for the Federal Circuit (CAFC) recently construed the on-sale bar provision of 35 U.S.C. 102(a) in a way that will make it easier for petitioners to challenge third party patents. While in an inter-partes...more
When a small pharmaceutical company discovers a new medicine, it’s not uncommon for the company – which may not itself have the resources or infrastructure to get that medicine to patients – to seek a distribution partner...more
Of course, telling someone that you have a secret is not the same as telling them what the secret is. Still, someone now knows that you have a secret. This has turned out to be an important concept for the “on-sale bar rule”...more
In a case of first impression, the Federal Circuit recently interpreted the scope of the “on sale” bar under 35 U.S.C. § 102(a)(1) of the America Invents Act (AIA). In Helsinn Healthcare v. Teva Pharmaceuticals, the court...more
Public sales which do not themselves disclose an invention nonetheless continue to be available as prior art events after the America Invents Act (AIA). Innovators must file US patent applications within one year of any sale...more
On May 1st, the Federal Circuit ruled that the America Invents Act (AIA) did not change the statutory meaning of “on sale” where the existence of a sale was publicly announced prior to patenting, even if the sale did not...more
Yesterday, the Federal Circuit provided much-anticipated guidance on the scope of the America Invents Act’s “on-sale” bar provision. Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., et al., Nos. 2016-1284, 2016-1787...more