Federal Circuit Reinstates Some of the “On-Sale” Bar

June 2017

In the recent case Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., Teva Pharmaceutical Industries, LTD., the Federal Circuit held that the “on-sale” bar under Section 102 of the U.S. Patent Act applies whenever “the existence of the sale is public, [even when] the details of the invention [are not] publicly disclosed in the terms of sale.”

Prior to 2013, Section 102 barred the patentability of an invention that was “patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent.” Moreover, courts had found that the “on-sale” bar in this statute applied in some cases even if the sale itself was secret. However, in the America Invents Act (“AIA”), Congress amended Section 102 to bar the 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) (emphasis added). In Helsinn, a case of first impression, the Federal Circuit determined whether this newly added language modified the “on-sale” bar to require the details of the invention to be publicly disclosed.

The Federal Circuit concluded that Congress did not intend to require that the details of the invention be publicly disclosed in a sale for the “on-sale” bar to apply under the AIA. As such, the Federal Circuit held that public disclosure of the sale’s occurrence was sufficient to trigger the “on-sale” bar. However, the Federal Circuit was careful to note that while the sale in Helsinn invalidated the patent in that case, the court stopped short of holding that all similar sales would be invalidating under Section 102.