Supreme Court Affirms Rule Applying On-Sale Bar to “Secret Sales”

January 25, 2019

The US Supreme Court has held that an inventor’s sale of an invention to a third party obligated to keep the invention confidential (i.e., a “secret sale”) can qualify as prior art under 35 USC Section 102(a). Helsinn Healthcare sought reversal of a Federal Circuit opinion to that effect, arguing that under the amended version of that section within the America Invents Act (AIA), an inventor’s confidential disclosure to a third party does not trigger the on-sale bar. The US Supreme Court agreed with the Federal Circuit, noting both that the amended statute included the same language, amply construed in prior case law, as the prior version and that “[t]he addition of ‘or otherwise available to the public’ is simply not enough of a change for us to conclude that congress intended to alter the meaning of the reenacted ‘on sale’”.

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