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TAKEAWAY: The Supreme Court clarifies that the America Invents Act (“AIA”) did not change the principle that a secret sale or offer for sale may constitute prior art.

On January 22, 2019, the Supreme Court issued its decision in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA Inc., holding that the Leahy-Smith America Invents Act (AIA) enacted in 2011 did not change the settled principle that a secret sale or offer for sale may trigger the on-sale bar.

When the AIA was enacted, the on-sale bar and other provisions formerly recited in pre-AIA 35 U.S.C. § 102(b) were codified under AIA § 102(a)(1) along with the newly added clause “or otherwise available to the public.” AIA § 102(a)(1) recites: “A person shall be entitled to a patent unless…the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public…” (emphasis added). The issue before the court was whether the newly added phrase “otherwise available to the public” altered the meaning of “on sale” in a way that “on sale” no longer covers secret sales and secret offers for sale.

The court held that the newly added clause did not alter the meaning of “on sale.” The court observed that the phrase “on sale” had a settled meaning and was reenacted under AIA § 102(a)(1). The court then concluded that the addition of the phrase “or otherwise available to the public” is not enough of a change to show that Congress intended to alter this meaning. The court further clarified that the phrase “otherwise available to the public” is a “broad catchall phrase” that “captures material that does not fit neatly into the statute’s enumerated categories but is nevertheless meant to be covered.”

The court’s decision clarifies a statutory provision that had created uncertainty. After the enactment of the AIA, the United States Patent and Trademark Office notably took the position that AIA § 102(a)(1) does not cover secret sales and offers for sale. The court’s decision clarifies that a secret sale or offer for sale may qualify as prior art under the AIA.