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Written January 23, 2019

On January 22, 2019, the Supreme Court held that the America Invents Act (AIA) did not change the on-sale doctrine, affirming the decision of the Federal Circuit. Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., U.S., No. 17-1229, 1/22/19. In a unanimous decision, the Court concluded that the phrase "or otherwise available to the public" added to §102 by the AIA serves only as a "catchall phrase" and is not enough of a change to conclude that Congress intended to alter the meaning of "on sale."

According to the Court, Supreme Court precedent suggests that a sale or offer of sale need not make an invention available to the public for the purposes of the on-sale bar, and Federal Circuit precedent "has long held that 'secret sales' can invalidate a patent." The Court held that the Federal Circuit made explicit what is implicit in past Supreme Court decisions, that a commercial sale to a third party who is required to keep the invention confidential may place the invention "on sale" under §102(a).  

This settled pre-AIA precedent, according to Justice Thomas, creates a presumption that when Congress reenacted the same "on sale" language in the AIA, it adopted the earlier judicial construction of that phrase.  Under that construction, he explained, the sale of an invention to a third party who is contractually obligated to keep the invention confidential places the invention "on sale" within the meaning of §102(a),

The Court also rejected the argument that the word "otherwise" narrowed the "on-sale bar" to only those sales where details of the invention are revealed to the public, noting that Helsinn's argument "places too much weight on §102's catchall phrase," particularly since the Court found that the phrase "on sale" had acquired "a well-settled meaning when the AIA was enacted." Given this, the Court chose not to read the addition of the catchall phrase as upsetting this body of precedent. 

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