The Supreme Court of the United States recently affirmed the decision of the U.S. Court of Appeals for the Federal Circuit in\u00a0Helsinn Healthcare v. Teva Pharmaceuticals<\/i>, 855 F.3d 1356 (2017), which invalidated a patent-in-suit under the post-AIA on-sale bar. The question presented, answered by the Court in the affirmative, was \u201c[w]hether, under the Leahy-Smith America Invents Act [AIA], an inventor\u2019s sale of an invention to a third party that is obligated to keep the invention confidential qualifies as prior art for purposes of determining the patentability of the invention.\u201d<\/p>\n
Justice Thomas, writing for the Court, concluded that the \u201con sale\u201d provision in \u00a7102(a)(1) of the AIA was a re-enactment of the \u201con sale\u201d bar provision in the pre-AIA patent statute that did not alter its meaning or interpretation, despite the inclusion of the phrase \u201cor otherwise available to the public\u201d in post-AIA \u00a7102(a)(1). Thus, based on the Federal Circuit\u2019s \u201csettled precedent,\u201d and consistent with the Supreme Court\u2019s decision in\u00a0Pfaff v. Wells Electronics<\/i>, 525 U.S. 55 (1998), the Court held that \u201ca commercial sale to a third party who is required to keep the invention confidential may place the invention \u2018on sale\u2019 under [the AIA].\u201d Details of the ruling and some takeaways for companies entering into licenses and supply agreements are discussed below.<\/p>\n