federal-circuit
Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc.
Ronald-E.-Cahill
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Prior to the America Invents Act (AIA), it was well settled that a sale did not need to inform the public of the details of an invention or the sale itself be public to preclude patentability. The AIA amended 35 U.S.C. §102 to provide “[a] person shall be entitled to a patent unless—(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” Many observers argued that the inclusion of “or otherwise available to the public” did not change the meaning of “on sale,” while others, including the U.S. Patent and Trademark Office, concluded that the AIA amendments require a sale to make the invention available to the public to be prior art.
In Helsinn Healthcare S.A. et al. v. Teva Pharmaceuticals USA, Inc., the Federal Circuit addressed the on-sale bar under the AIA for the first time. The panel held that when the existence of a sale is public, the details of the invention do not need to be publicly disclosed for the sale to be prior art. The panel’s decision, however, avoided resolving the central issue—whether the AIA changed the meaning of “on sale.”
Following Helsinn’s submission of its petition for rehearing, the Boston Patent Law Association (BPLA) filed an amicus brief to encourage the Federal Circuit to rehear the case en banc. The BPLA brief does not take a position on whether the meaning of “on sale” changed. Rather, the BPLA urges the court to seize this opportunity to provide clear guidance on whether the meaning of “on sale” as used in 35 U.S.C. §102(a) retains the same meaning that “on sale” had prior to the AIA. In support of its position, the BPLA highlights the substantial confusion regarding the effect of the AIA amendments on the meaning of “on sale” and emphasizes the importance to all participants in the patent system of being able to determine what is prior art. Further, the BPLA argues that this is the proper case for en banc rehearing on this issue.
As reported by Law360, the BPLA is one of several IP groups that submitted amicus briefs in this case, including the Intellectual Property Owners Association, American Intellectual Property Law Association, Pharmaceutical Research and Manufacturers of America, and Biotechnology Innovation Organization.
A copy of the BPLA amicus brief is provided here.
Ron Cahill, Nutter
NEWSLETTER ARCHIVE
Volume 48, Issue 3
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Index
Community Calendar Read more >
Table of Contents
Message from the President Monica Grewal
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Harvesting Innovation: 3 Tips for IP Managers
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Save the Date: BPLA Annual PCT Seminar and Madrid Protocol Seminar
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The Annual Dinner to Honor the Federal Judiciary, May 12, 2017
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Patent Attorneys Give Back to Local Entrepreneurs and Artists
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PTAB/Hatch-Waxman Parallel Proceedings
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Helsinn Healthcare S.A. et al. v. Teva Pharmaceuticals USA, Inc.
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In memoriam of Douglas C. Doskocil
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On-Sale Bar to Patent Protection Under the AIA
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Chemical Patent Practice Lamplighter Brewery tour
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Fashion and Intellectual Property: Many Options to Protect Your Design, But No One-Stop Shop
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Patent Eligibility as a Function of New Use, Aggregation and Preemption Through Application of Principle
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“Making Connections in Boston’s IP Community”
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Settlement Agreements Can Provide a Yardstick for Measuring Damages in Subsequent Patent Infringement Lawsuits
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The Federal Circuit Limits the Scope of Covered Business Method Proceedings
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The Supreme Court’s 2016-2017 Term – An IP Case Summary
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Members On The Move
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Message from the Editor-in-Chief
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BPLA Biotechnology Committee Announcement
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Officers and Board of Governors
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Community Calendar
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Announcement of BPLA’s 7th Annual Invented Here! Program
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Save The Date: BPLA’s Second Annual PTAB Summit
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