December 06, 2018

US Supreme Court to decide on a patent case involving ‘on-sale bar’


In Helsinn Healthcare S.A., (Petitioner,) v. Teva Pharmaceutical USA, Inc., et al., (Respondents), the issue at the Supreme Court of the United States was “Whether, under the Leahy-Smith America Invents Act, an inventor’s sale of an invention to a third party that is obligated to keep the invention confidential qualifies as prior art for purposes of determining the patentability of the invention.”

That is, “Whether the ‘on-sale bar’ prohibiting a patent on an invention that has been on sale for over a year applies to inventions that have been on sale to purchasers who are required to keep their details confidential.”

The petitioner argued that the statute required the invention be “on sale” to the general public, which it was not. An amicus curiae supporting the petitioner stated that the invention was not on sale because the purchaser did not use the invention for its intended purpose.

On the other hand, the respondent claimed that the invention was on sale to the public because the court has consistently used the definition “A product that is sold or offered for commercial sale is on sale”.

The petitioner said, in the America Invents Act, Congress transformed the nation's patent laws. As part of its shift from a first-to-invent to a first-to-file system, Congress revised the definition of "prior art" and clarified the proper understanding of the phrase "on sale". The on-sale bar, like the other bars in the definition, reaches only a disclosure that makes the claimed invention available to the public. That interpretation is consistent with the plain text of the definition and its legislative history. It's consistent with the predominant objective of the on-sale bar as repeatedly articulated by this Court; namely, to preserve the public's access to inventions that have entered the public domain.

The court then asked the petitioner if it might not be consistent with the actual meaning of the word "sale", to which, the petitioner replied that the critical phrase here is not "sale"; it is "on sale". The petitioner added, “And I do think that the more natural understanding of ‘on sale’ is that something has been made available for purchase by the public”.

Thereafter, Malcolm L. Stewart, an amicus curiae supporting the petitioner, said, “Congress retained the phrase ‘on sale’, but it added the phrase ‘or otherwise available to the public’. And that served two purposes.”

According to Stewart, “It functioned as a catch-all so that things that were not enumerated might still constitute prior art. But it also served the purpose of clarifying that the preceding enumerated categories were different ways of making the invention available to the public.”

Stewart further added, “...there is evidence both from the face of the statute, the fact that ‘otherwise available to the public’ was added, also from the legislative history, that Congress was attempting to clarify that the enumerated terms were ways of making the invention available to the public.”

Stewart then said, “ of the justifications for the on-sale bar traditionally has been prevent the inventor from profiting before he is ready to put his invention up for patent.”

The case has been submitted and the court will pronounce its verdict on a later date.

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