A Confidential (Secret) Sale of an Invention Qualifies as Prior Art

On January 22, 2019, the Supreme Court unanimously decided Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc. et al. holding that “[a] commercial sale to a third party who is required to keep the invention confidential may place the invention ‘on sale’ under §102(a).”

The “on sale” provision of the America Invents Act precludes a person from obtaining a patent on an invention that was “in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention,” 35 U. S. C. §102(a)(1). In this case, Helsinn entered into two agreements with another company granting that companythe right to distribute, promote, market, and sell a 0.25 mg dose of palonosetron in the United States almost two years prior to filing its first provisional patent application for the 0.25 mg dose of palonosetron. Because the 0.25 mg dose was “on sale” more than one year before Helsinn filed the first provisional patent application in 2003, the sale qualifies as invalidating prior art to the later filed applications. The fact that the agreements required that the companykeep confidential any proprietaryinformation received under the agreements (i.e., the “secret” nature of the sale) did not prevent the sale from becoming prior art.

What does this mean to me?

To preserve your abilityto patent an invention in the U.S. and internationally, and to maintain the enforceability of any patent that issues, it is always best to file a patent application prior to ANY public disclosure or offer for sale of an invention. If you are seeking U.S. patent protection only, it is possible to avail yourself of a one year Grace Period to file a patent application after making such a public disclosure or offer for sale, but for other reasons, this is not an advisable course of action.


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Access the Supreme Court opinion directly at Supreme Court Opinion.