LATEST FROM THE SUPREME COURT

Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 586 U.S. ____ (2019)

Today, the Supreme Court addressed the extent of the “on-sale” bar following the passage of the America Invents Act (“AIA”), and held that the change in language in Section 102 did not change the requirements for an invention to be considered “on sale.”

Under the pre-AIA version of Section 102(b), “[a] person shall not be entitled to a patent unless … (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.”

The Supreme Court had previously held in Pfaff v. Wells Electronics, Inc., 525 U.S. 55 (1998) that an invention was “on sale” within the meaning of pre-AIA Section 102 when it was “the subject of a commercial offer for sale” and “ready for patenting.”

In 2011, Congress passed the AIA, changing section 102, section (a) of which now reads: “A person shall be entitled to a patent unless—(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.”

Written by: Scott D. Eads and Nika Aldrich, Schwabe Williamson & Wyatt