In its 2018 decision in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., the Supreme Court held that an inventor’s sale of an invention to a third party who is obligated to keep the invention confidential can create an
2019 IP Law Year in Review: Patents
Executive Summary
2019 was another important year in intellectual property law that resulted in hundreds of decisions by the courts and Patent Trial and Appeal Board (PTAB) that may affect your company’s litigation, patent prosecution or business strategy. This special
Supreme Court Holds That AIA On-Sale Bar Applied to Secret Sales
In an inter-partes review proceeding (IPR), a challenger can rely only on patents and printed publications to challenge the validity of a patent claim. In contrast, in a post grant review (PGR) proceeding, a challenger can rely on any ground
Helsinn Update: The Supreme Court Preserves the Substance of the Pre-AIA On-Sale Bar
We previously published a post on the Federal Circuit’s decision in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., and Helsinn’s subsequent petition for certiorari.
On January 22, 2019, the Supreme Court affirmed the Federal Circuit in a unanimous decision,
Supreme Court Unshrouds the ‘On Sale’ Bar as Applied to Secret Sales
This week, the Supreme Court issued a decision holding that a secret sale qualifies as prior art. At issue was whether the America Invents Act (AIA) changed the “on sale” bar to patentability to exempt secret sales as prior art.[1]
Helsinn Healthcare v. Teva USA (Decision January 22, 2019)
Argument: December 4, 2018Decision: January 22, 2019Petitioner Brief: Helsinn Healthcare S.A.Respondent Brief: Teva Pharmaceuticals USA, Inc.,Court below: Federal Circuit Court of AppealsSupreme Court reinforces the longstanding rule that even a non-public sale may invalidate a patent
Did the AIA Change the On-Sale Bar Standard? The Supreme Court Will Decide.
The “on-sale bar” deems that certain sales of an invention that occur more than one year before a patent application is filed are a bar to patentability. See 35 U.S.C. § 102(b) (pre-America Invents Act (“AIA”)); 35 U.S.C. § 102(a)(1) (AIA). On
Metallizing Forfeiture Post-Helsinn
This article was originally published on PatentlyO.com.
In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., the Federal Circuit had its first opportunity to address the impact of the “or otherwise available to the public” clause contained in post-AIA 35
Federal Circuit Clarifies, Bolsters On-Sale Bar
Generally, an invention is not patent eligible if it has become publicly known. If the patent is subject to a sale or offer for sale prior to the critical date, it has become “publicly known” and thus no longer eligible
Federal Circuit Holds Non-Public Sales Can Still Satisfy the On-Sale Bar for Patents under the AIA
In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., the United States Court of Appeals for the Federal Circuit recently ruled that the America Invents Act’s (“AIA”) did not change the meaning of the on-sale bar provision in 35 U.S.C.