By James E. Lowe, Jr.
In a precedential opinion from the Unites States Court of Appeals for the Federal Circuit, the Court reaffirmed, on May 1, 2017, the need to get your patent applications filed sooner than later (Helsinn Healthcare S.A., v. Teva Pharmaceuticals USA, Inc.). The Court concluded that if there is a public commercial sale or offer of sale of the patented subject matter (what is covered by the patent claims) more than a year before an application is filed, and the invention was ready for patenting, then this “on sale” activity will invalidate a patent for the invention. “Ready for patenting” means that an inventor possessed an enabling understanding of the invention.
The Court also addressed whether the commercial sale needed to be known by the public, and whether the sale needed to describe the invention. The sale must unambiguously place the invention on sale, but the sale document itself does not need to describe the invention. Delivery after the sale, no delivery, and even if none of the invention product was on hand, does not defeat the on sale bar. If the completed sale would have put the invention in the hands of the public, then the on sale bar applies.
The Court refused to particularly decide whether truly secret sales qualify as prior art under Section 102, but the law in this area will undoubtedly continue to develop in the months ahead. The safest course continues to be filing a patent application prior to any sale.
Please contact your Davis & Kuelthau, s.c. attorney, the author noted above or the related practice group chair linked here if you have any questions.