Managing IP Features Jennifer Bailey on pre-AIA On-Sale Bar Interpretation


On January 22, 2019, the Supreme Court unanimously held Helsinn v. Teva maintains status quo of pre-America Invents Act precedent regarding secret sales.

Many in the Patent Bar, including the U.S. Patent and Trademark Office, pointed to the catchall language in Section 102(a)(1) that an invention was considered “on sale” or “otherwise made available to the public.” The USPTO interpreted Section 102(a)(1) as changing the pre-AIA law, such that if the sale was secret, then it was not barring.

Erise IP shareholder Jennifer Bailey told Managing IP, “The patent office’s interpretation is more consistent with European practice, which requires an enabling prior public use or sale to be an invalidating sale/use barring patentability.”