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AIA On-Sale Bar at the High Court: What You Need to Know

December 19, 2018

Fenwick IP litigation partner Kevin McGann talked to Law360​ about the impact of the America Invents Act on the on-sale bar in patent cases. 

The United States Supreme Court heard arguments on the Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA Inc. case. The on-sale bar holds that sales of an invention occurring more than a year before a patent application is filed are prior art that can be used to invalidate a patent, and the Court is considering whether the sale must make the invention public.

Companies are hopeful the Court will provide guidance and clarify what steps businesses can take to commercialize an invention and still be eligible for a patent.

“Obviously, everybody would like it to go their way but aside from it going your way, the next most important thing is knowing what the rules of the game are,” McGann said. “If you don’t know what the rules are, you can’t plan your business.” 

If the Court were to affirm the Federal Circuit’s decision that as long as the existence of the sale is public, then it doesn’t matter if the details of the invention remain a secret, McGann said this would cast doubt on a number of issued patents. He mentioned that the USPTO has already taken the position that confidential sales are not sales that qualify as prior art.

“What happens if that’s not the case, if the Federal Circuit’s decision is upheld and confidential sales are still sales? Does that push a cloud over the examination for the last several years? That would be worrisome to some extent,” McGann told Law360.

The full article is available on Law360 (subscription required).

McGann also co-authored a separate Law360​ article looking at the Helsinn case and examining the impact of the Supreme Court’s potential decision.​​​