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TAKEAWAY: If the writ of certiorari is granted, the Supreme Court may soon determine whether confidential sales fall within the AIA on-sale bar.

The on-sale bar, set forth in 35 U.S.C §102, prohibits a patent if the invention sought to be patented was offered for sale or sold more than one year before the patent application was filed. Under pre-AIA §102(b), a patent is barred if the invention was on sale in the United States more than one year before the filing date of the patent application, regardless of whether the sale was public or secret. Under AIA §102(a)(1), a patent is barred if the invention was on-sale “or otherwise available to the public” more than one year before the filing date of the patent application. Since its inception, the phrase “or otherwise available to the public” has been cloaked in ambiguity with some arguing that such a sale must be public.

In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc. (Fed. Cir. 2017), the Federal Circuit Court considered the AIA on-sale bar. The Federal Circuit acknowledged that in enacting AIA §102(a)(1), members of Congress stated that the new §102 on-sale bar would apply only to sales in which the invention was made public, not to confidential sales. In Helsinn, the court found that a supply and purchase agreement filed with the SEC was a public sale and that it was irrelevant that certain terms of the agreement were not publicly disclosed.

Following a denial for an en banc rehearing, Helsinn filed a petition to the United States Supreme Court for writ of certiorari, asking the court to answer the question of whether confidential sales fall within the on-sale bar. This writ is still pending with the Supreme Court. Indicative of the need for clarification of the metes and bounds of the on-sale bar, ten amici briefs were recently filed in support of Helsinn’s petition.