The U.S. Supreme Court granted certiorari in Helsinn v. Teva in late June, teeing up an important question about the on- sale bar under the AIA. In this particular case, which the Federal Circuit declined to rehear en banc, a patent was invalidated after the sale was partially made public: the details of the invention, an anti-nausea drug, were kept secret, but the existence of the sale was publicly disclosed.
Our panel of experts, including a top Supreme Court advocate, in-house counsel, and a patent litigator, will review the current status quo after two significant Federal Circuit decisions in recent years on the on-sale and public use bars, Merck & CIE v. Watson Labs and The Medicines Co. v. Hospira. These decisions raised in-house concerns about patent prosecution practices, confidentiality, and guidance to commercial teams. The panelists will also consider what questions may remain unanswered after Helsinn, such as (1) does a fully-secret sales offer count to bar a patent under section 102? and (2) even if it serves as a bar to patentability under section 102, to what extent does a secret sale count as “prior art” for obviousness purposes? They will also consider the Justices’ options in this case.
- John Duffy, University of Virginia
- Jennifer Johnson,DuPont
- Christopher Loh, Fitzpatrick, Cella, Harper & Scinto