• Legal Era India
  • Legal Era Global
  • Membership
  • Sign inSUBSCRIBE
Legal Era
X
Sign in
  • Home
  • News
    +
    • From the Courts
    • Policy & Law
    • Supreme Court (India)
    • High Court (India)
    • TAX Updates
    • MARKET WATCH
    • Deal Street
    • Global Insights
    • IBC Cases
    • Hires & Moves
    • IP News
    • Competition Verdict
    • Global Articles
    • Global Deals
  • Articles
    +
    • ABOUT THE LAW
    • AWARDS & ACCOLADES
    • Aerospace
    • Agriculture
    • Alternate Dispute Resolution
    • Banking and Finance
    • Bankruptcy
    • Book Review
    • Bribery & Corruption
    • Commercial Litigation
    • Competition Law
    • Conference Reports
    • Consumer Products
    • Contract
    • Corporate Governance
    • Corporate Law
    • Covid-19
    • Cryptocurrency
    • Cybersecurity
    • Data Protection
    • Defence
    • Digital Economy
    • E-commerce
    • Employment Law
    • Energy and Natural Resources
    • Entertainment and Sports Law
    • Environmental Law
    • FDI
    • Food and Beverage
    • Health Care
    • IBC Diaries
    • Insurance Law
    • Intellectual Property
    • International Law
    • Labour Laws
    • Litigation
    • Litigation Funding
    • Manufacturing
    • Mergers & Acquisitions
    • NFTs
    • Privacy
    • Private Equity
    • Project Finance
    • Real Estate
    • Risk and Compliance
    • Technology Media and Telecom
    • Tributes
    • Zoom In
    • Take On Board
    • In Focus
    • Law & Policy and Regulation
    • IP & Tech Era
    • Viewpoint
    • Arbitration & Mediation
    • Tax
    • Student Corner
    • ESG
    • Gaming
    • Inclusion & Diversity
  • Law Firms
    +
    • Global Law Firm
    • Asia Law Firm
    • India Law Firm
  • In-House
  • Rankings
  • E-Magazine
  • Legal Era TV
  • Legal Era TV
  • Events
  • News
    • From the Courts
    • Policy & Law
    • Supreme Court (India)
    • High Court (India)
    • TAX Updates
    • MARKET WATCH
    • Deal Street
    • Global Insights
    • IBC Cases
    • Hires & Moves
    • IP News
    • Competition Verdict
    • Global Articles
    • Global Deals
  • Articles
    • ABOUT THE LAW
    • AWARDS & ACCOLADES
    • Aerospace
    • Agriculture
    • Alternate Dispute Resolution
    • Banking and Finance
    • Bankruptcy
    • Book Review
    • Bribery & Corruption
    • Commercial Litigation
    • Competition Law
    • Conference Reports
    • Consumer Products
    • Contract
    • Corporate Governance
    • Corporate Law
    • Covid-19
    • Cryptocurrency
    • Cybersecurity
    • Data Protection
    • Defence
    • Digital Economy
    • E-commerce
    • Employment Law
    • Energy and Natural Resources
    • Entertainment and Sports Law
    • Environmental Law
    • FDI
    • Food and Beverage
    • Health Care
    • IBC Diaries
    • Insurance Law
    • Intellectual Property
    • International Law
    • Labour Laws
    • Litigation
    • Litigation Funding
    • Manufacturing
    • Mergers & Acquisitions
    • NFTs
    • Privacy
    • Private Equity
    • Project Finance
    • Real Estate
    • Risk and Compliance
    • Technology Media and Telecom
    • Tributes
    • Zoom In
    • Take On Board
    • In Focus
    • Law & Policy and Regulation
    • IP & Tech Era
    • Viewpoint
    • Arbitration & Mediation
    • Tax
    • Student Corner
    • ESG
    • Gaming
    • Inclusion & Diversity
  • Law Firms
    • Global Law Firm
    • Asia Law Firm
    • India Law Firm
  • In-House
  • Rankings
  • E-Magazine
  • Legal Era TV
  • Legal Era TV
  • Events

Top Stories

HomeNewsGlobal InsightsAmerica
6 Dec 2018 5:15 AM GMT

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

By Legal Era

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...

ToRead the Full Story, Subscribe to Legal Era

Access the exclusive LEGAL ERAStories,Editorial and Expert Opinion

Subscribe Now
AlreadyaSubscriber?SigninNow
View Plans

child-court

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, “...one 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.

Next Story
Similar Posts
Trending Now
Recommended Articles
  • News
  • From the Courts
  • Supreme Court (India)
  • High Court (India)
  • Global Insights
  • Deal Street
  • Hires & Moves
  • Refund & Cancellation Policy
  • Articles
  • Zoom In
  • Take On Board
  • In Focus
  • Law & Policy
  • IP & Tech Era
  • Viewpoint
  • Arbitration & Mediation
  • Tax
  • Student Corner
  • Interviews
  • Law Firms
  • E-Magazine
  • Legal Era TV
  • Membership
  • Reader's Feedback
  • Cartoons
  • Subscribe
  • Advertise
Follow Us
Subscribe Newsletter
  • 2023© All rights reserved Legal Era Media Group
  • Who We Are
  • Careers
  • Advertise with Us
  • Contact Us
  • Privacy Policy
  • Terms and Conditions
Powered by  Hocalwire
X
X
We use cookies for analytics, advertising and to improve our site. You agree to our use of cookies by continuing to use our site. To know more, see our Cookie Policy and Cookie Settings.Ok