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.