Tag Archives: Secret Prior Art

Where are we with Secret Commercialization?

The Federal Circuit’s recent decision in Helsinn Healthcare S.A. v.  Teva Pharmaceuticals (Fed. Cir. May 1, 2017) held the public sale of an invention qualifies as prior art even if the details of the invention are not publicly disclosed.  The PTO has been operating for the past several years that such sales do not qualify as prior art. From the MPEP:

The phrase “on sale” in AIA 35 U.S.C. 102(a)(1) is treated as having the same meaning as “on sale” in pre-AIA 35 U.S.C. 102(b), except that the sale must make the invention available to the public.

MPEP 2152.02(d).  This statement is obviously wrong under Helsinn, and I expect that the Supreme Court would side with the Federal Circuit on this point (but probably won’t take the case).

The court expressly refused to determine whether a non-public sale (or offer-to-sell) also qualifies as prior art under the AIA or must at least the fact-of-the-sale be made public.  The court also refused to make any holding regarding whether secret commercialization (other than sales) by the patentee qualifies as prior art under the AIA.  The AIA does not support expressly support such a notion – of course neither did the statute pre-AIA.  The court also does not discuss the continued relevance of experimental use, but does fall-back on the Pfaff ready-for-patenting on-sale analysis.

Obviousness: These issues involve an interesting and largely unresolved mix between statutory prior art and “non-statutory  bars to patentability.”  The outcome of this mix becomes quite relevant and important once we begin focusing on obviousness.  The Post-AIA obviousness statute redoubles its focus on the prior art – as such any non-statutory-bars eventually developed by the courts should probably  not qualify as prior art for obviousness purposes.

Helsinn: Post-AIA Public Sales are Prior Art Even Without Disclosing the Invention

Helsinn v. Teva (Fed. Cir. 2017) [HelsinnDecision]

In an important decision, a Federal Circuit has interpreted the post-AIA on-sale bar of 35 U.S.C. § 102 to include sales made available to the public (i.e., noticed in an SEC filing), even if the published portion does not fully disclose the invention.

[Post-AIA On sale bar attaches] if the existence of the sale is public, the details of the invention need not be publicly disclosed in the terms of sale.

The court here refused to particularly decide whether truly secret sales still qualify as prior art under Section 102, but (in my view), appears to strongly suggest that the on sale bar will continue to apply in the truly secret cases as well.

The AIA did not directly change the pre-AIA “on sale” language, but did linguistically suggest that only public offers for sale should be considered as prior art.  This change from prior law comes from the rewritten Section 102 that bars patentability of an invention that “was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” 35 U.S.C. § 102(a)(1).  Here, the linguistic argument is that the “otherwise available to the public” clause limits on-sale activity to those that are also available to the public.  This is the interpretation taken by the USPTO.  However, the PTO’s interpretation is given no deference by the Federal Circuit.  And, although some congressional history supports the change, the linguistic argument is not strong (in my opinion).

In the present case, the pre-filing sale was actually publicly announced in an SEC filing, and that filing included a redacted version of the contract.  According to the court, the disclosed agreement included “all the pertinent details of the transaction other than the price and dosage levels.”  Although the dosage levels were a key element of the claimed invention, the Federal Circuit ruled that the sale nonetheless created prior art:

Requiring such disclosure as a condition of the on-sale bar would work a foundational change in the theory of the statutory on-sale bar. Indeed, the seminal Supreme Court decision in Pennock addressed exactly such a situation— the public sale of an item but the withholding from “the public the secrets of [the] invention.” Pennock v. Dialogue, 27 U.S. (2 Pet.) 1, 19 (1829). Failing to find such a sale invalidating, said the Court, “would materially retard the progress of science and the useful arts, and give a premium to those who should be least prompt to communicate their discoveries.” Id.
It will be interesting to see how this develops moving forward.  PTO needs to immediately change its rules, and some prosecutors will need to start disclosing again.