On-Sale Bar After Helsinn Healthcare v. Teva Pharmaceuticals

Greenberg Traurig will be hosting this event for In House IP Managers Forum Meeting.

Learn what you need to know about the recent Supreme Court’s Helsinn decision, and how it affects your practice.

Under pre-AIA 35 USC § 102(b), the confidential commercialization of an invention triggered a one year period within which the inventor must file a patent application. The language of the statute was modified in 2011 with the passage of the America Invents Act (AIA). The USPTO interpreted AIA § 102 as limiting prior art to documents and acts that place the claimed invention in the public domain. The Federal Circuit disagreed, and the issue went before the US Supreme Court.

In particular, will be addressed questions that remain after the Supreme Court’s opinion, and will provide guidance for patent practitioners looking to keep their practice sharp.

According to this decision, an inventor’s sale of an invention to a third party is obligated to keep the invention confidential qualifies as prior art for purposes of determining patentability.

The decision is of a very high importance to companies internal policies in connection with offers for sale/sales/agreements vs corresponding patent filing strategy.