July 9, 2020

Volume X, Number 191

July 09, 2020

Subscribe to Latest Legal News and Analysis

July 08, 2020

Subscribe to Latest Legal News and Analysis

July 07, 2020

Subscribe to Latest Legal News and Analysis

Secret Sales Still “On Sale” For Patent Purposes

On January 22, 2019, the U.S. Supreme Court handed down its decision in Helsinn Healthcare S.A. v. Teva Pharmaceuticals Inc. The Helsinn case asked whether a sale of an invention to a third party, where the third party is required to keep the invention confidential, places the invention “on sale” under the America Invents Act (AIA), thus potentially barring the ability to patent the invention. The Supreme Court held that such a sale does fall within the provision of the AIA.

Broadly speaking, an invention may be considered “on sale” when the invention is a) the subject of a commercial offering for sale and b) otherwise ready for patenting. In its most straightforward form, an invention will be “on sale” if it is sold in a store, or otherwise to the general public. However, other types of sale, such as to a company, may occur, particularly when the invention is the property of a larger business.

Businesses may engage in a sale, or other type of disclosure, of an invention to a third party for a number of reasons, such as marketing, manufacturing, and distribution. Often, such sale or disclosure will include a confidentiality clause, meaning that the public at large will not have access to the details of the invention. Helsinn argued that, in entering into an agreement with its manufacturer, the presence of such a confidentiality clause meant that its invention was not “on sale” under the AIA because the details were not available to the public; all that the public had access to was the press release announcing the partnership

The Supreme Court affirmed its previous, pre-AIA precedent in Helsinn, saying that a sale (or an offer to sell) need not make an invention available to the public to fall within the on-sale bar.  Although the AIA added the phrase “or otherwise available to the public” to the language of the on-sale bar, the Supreme Court found that this phrase serves as a catchall, not as a limiter. A business, therefore, may not need to formally sell its invention in order to run up against this bar; it may be sufficient, for example, to demonstrate a new invention at a trade show.

The one-year limitation of the on-sale bar still exists, meaning that a business has one year from the time of first sale or first demonstration to file a patent application on the invention being sold. In light of Helsinn, it is especially important for businesses to note the date of that first disclosure and ensure that an application is put on file within one year of that date (assuming one was not filed previous to the disclosure). Otherwise, even a confidential sale that the general public is not privy to the details of has the ability to prohibit patent protection. Of course, the invention owner will also need to ensure that it is the first to file for a patent, given the transition to the first-to-file system under the AIA; accordingly, it remains the best practice to begin the patent process before any disclosure is made.

© 2020 Davis|Kuelthau, s.c. All Rights ReservedNational Law Review, Volume IX, Number 26


About this Author

Erin Kaprelian Intellectual Property Lawyer

Erin is a member of Davis|Kuelthau’s Corporate Team in Milwaukee focusing primarily on intellectual property law.

Prior to joining the firm, Erin worked at a Minnesota law firm where she drafted patents relating to network management, network security, access point coordination, and related technologies. She also prosecuted patents relating to network management and security, access point coordination, cloud computing, data mining and analytics, enterprise communication, and related technologies.

Erin has actively served in the community by working at the Marquette Legal...

Joseph S. Heino, trademark law, intellectual property law, Davis & Kuelthau, Milwaukee attorney

Joe is a registered U.S. Patent Attorney and a shareholder with the firm. He is experienced in all areas of intellectual property law, including patent, trademark, copyright, and trade secret law, as well as licensing and franchising. Joe represents a wide range of clients in the local, regional and national manufacturing and service sectors and helps those clients build fences around their intellectual property, allowing them to maintain technological and market advantages over their competitors throughout the world and in cyberspace.

His background and experience involves assisting clients with intellectual property matters relating (generally) to electrical, mechanical and electromechanical technologies and (specifically) to scientific and medical devices, electrical and electronic devices, metal ionization methods and devices, energy conservation techniques, automated machining, computer software and computer peripherals, as well as innovative business methods, trademarks and service marks. Joe also published his first fiction novel "Seamless", a Midwestern ghost story that explores the unsettling possibility of interdimensional contact.

Representative Clients

  • Individual Inventors, Innovators and Entrepreneurs
  • Physicians, Medical Groups and Healthcare Providers
  • Business Owners
  • Software Developers
  • Manufacturing Companies
  • Service Providers