by Dennis Crouch
The Supreme Court has granted Helsinn’s petition for writ of certiori in the first case focusing on the 2011 rewriting of the prior art and novelty statute 35 U.S.C. 102.
Issue: Whether, under the Leahy-Smith America Invents Act, an inventor’s sale of an invention to a third party that is obligated to keep the invention confidential qualifies as prior art for purposes of determining the patentability of the invention.
Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA Inc., Docket No. 17-1229. Expect a hearing this fall and a decision early 2019.
A major focus of discussions surrounding the AIA first-to-file provisions was to limit prior art to objective and publicly available references. However, Congress did not expressly alter the “on sale” bar language that has been used as a source for the rule that an inventor’s pre-filing secret sales activities (or other commercializing uses) will bar later patenting.
My initial expectation is that the Federal Circuit decision will be affirmed — with a holding that Congress did not intend to overrule 190 year old Supreme Court precedent. But, the conventional wisdom in patent cases is that the Supreme Court does not ordinarily grant certiorari in order to affirm the Federal Circuit.
A key underlying aspect of the focus here is that differential treatment of secret commercialization between the inventor and some random third party has never been express within the statute. The Court need not wait for a new congressional statement to revisit that non-statutory approach.
In my mind, the biggest question in this area is how sales, offers, or other commercialization should be treated in an obviousness analysis.