U.S. Supreme Court Upholds Bar on Secret Sales

Wednesday, January 23, 2019

On January 22, 2019, the U.S. Supreme Court issued its long-awaited decision, Helsinn Healthcare S.A. v. Teva Pharms. USA, Inc., No. 17-1229, ___ S.Ct. ___, 2019 WL 271945 (2019), addressing the effect of Congress’ passage of the Leahy-Smith America Invents Act (“AIA”) (2011) on prior art, in particular “secret on-sale” prior art.  The Supreme Court unanimously held that secret sales remain on-sale prior art that can invalidate a patent under the AIA.  In the words of the Court, “a commercial sale to a third party who is required to keep the invention confidential may place the invention ‘on sale’ under the AIA.”  An “on-sale bar” is triggered if the invention is (1) the subject of a commercial offer for sale not primarily for experimental purposes and (2) ready for patenting.  Confidentiality of the sale is irrelevant.  The decision serves to emphasize the importance of early filing of patent applications.