SCOTUS Holds “Secret Sales” May Trigger On-Sale Patent Bar

In Helsinn Healthcare S.A. v. Teva Pharm. USA, Inc., No. 17-1229, (Jan. 22, 2019), a unanimous Supreme Court held that the "on sale" bar of 35 U.S.C. § 102(a)(1) of the America Invents Act ("AIA") could be triggered by a patentee making a "secret" commercial sale of an invention more than one year before filing a patent application.
The Court explained that it was well-settled under pre-AIA law that the "on sale" bar could be triggered by "a commercial sale to a third party who is required to keep the invention confidential," and held that the AIA's addition of the catchall phrase "or otherwise available to the public" in § 102(a)(1) was not enough of a change for the Court to conclude that Congress intended to alter this settled meaning.
In view of this decision, and the AIA's first-to-file provisions, clients should consult with their IP counsel before engaging in any promotion or commercialization of their inventions.