Grace period and on sale bar related to “secret” sales

In a Supreme Court decision which was unanimous and authored by Justice Thomas, the Court reiterated the significance of offering a product for sale and how it affects the patent eligibility of the product. In Helsinn Healthcare v. Teva Pharma USA (Supreme Court 2019) the Court was asked to look at the enacted AIA and whether “secret” sales continue to qualify as prior art under the revised Section 102.  The court examined the provision that “an inventor’s sale of an invention to a third party who is obligated to keep the invention confidential can qualify as prior art under §102(a).” The Court first decided that the AIA did not change the law previously enacted by Congress and expressly addressed the question of whether or the extent that an offer or sale must be public:

“Although this Court has never addressed the precise question presented in this case, our precedents suggest that a sale or offer of sale need not make an invention available to the public … The Federal Circuit … has made explicit what was implicit in our precedents. It has long held that “secret sales” can invalidate a patent.”

“Given that the phrase “on sale” had acquired a well-settled meaning when the AIA was enacted, we decline to read the addition of a broad catchall phrase to upset that body of precedent.”

This ‘On Sale’ ruling further shows the need for earlier filings of patent applications so that inventors can avoid any issues with losing patent eligibility for their products that they may intend to bring to mark or offer for sale. The earlier an application is filed in the life of a product, the safer it is for it’s protection via patent law.


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