Supreme Court Rules that “Confidential” Sales of Invention to Third Parties Place Invention “On Sale” for Prior Art Purposes

On January 22, 2019, the U.S. Supreme Court issued its unanimous decision (available here) in Helsinn Healthcare v. Teva Pharmaceuticals. Under United States law, a person cannot receive a patent on an invention that was “in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” 35 U.S.C. § 102(a)(1). (An exception exists for certain disclosures made one year or less before the effective filing date of a claimed invention, which renders such disclosures outside the realm of prior art. See 35 U.S.C. § 102(b)(1).)

At issue in Helsinn was whether the sale of an invention to a third party who is contractually obligated to keep the invention confidential places the invention “on sale” within the meaning of § 102(a). The Court found that such a confidential sale renders the invention “on sale” under § 102(a).

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