by Dennis Crouch
Helsinn Healthcare v. Teva Pharma (Supreme Courtroom 2018) [Helsinn cert petition]
Helsinn has now filed its significantly predicted petition for writ of certiorari focusing on the concern of how just the 2011 AIA transformed the “on sale bar.”
Whether, beneath the Leahy-Smith The united states Invents Act, an inventor’s sale of an creation to a third party that is obligated to maintain the creation confidential qualifies as prior artwork for needs of pinpointing the patentability of the creation.
The well drafted petition from Williams & Connolly prime Supreme Courtroom attorney Kannon Shanmugam has a superior shot of currently being granted — specifically if supported by a powerful amicus temporary from the Federal Governing administration. The problem listed here is that the petition asks the Supreme Courtroom to drop an approach it has formulated more than the past 200 yrs without the need of (in my look at) a distinct statutory statement from Congress.
Prior to the AIA, the On Sale Bar prevented the patenting of innovations that experienced been on-sale extra than one yr ahead of the application’s submitting day. 35 U.S.C. 102(b). Pre-AIA, on sale pursuits contain non-enabling solution provides to market the creation (so very long as the creation was or else all set-for-patenting). Due to the fact most corporations outsource things of products enhancement and manufacture — the rule has developed potential for trapping the unwary.
I will return to this in a separate post, but the essential statutory concern is regardless of whether the statutory revision removes solution or non-enabling sales (or some element thereof) from the scope of prior artwork.
Pre-AIA 102: A particular person shall be entitled to a patent until … (b) the creation was … on sale in this nation [before the critical date]
Article-AIA 102: A particular person shall be entitled to a patent until . . . (1) the claimed creation was … on sale, or or else accessible to the community ahead of the [critical date]
The statutory hook is the “otherwise accessible to the public” clause that the patentee listed here argues need to be noticed as also restricting the scope of the on sale bar to only contain publicly accessible sales exercise. This statutory hook is coupled with supporting evidence from the AIA’s passage and about producing prior art is coupled with the USPTO’s interpretation of the statute in accord with Helsinn’s approach.