Industry Insiders: Opinions Mixed in Aftermath of Supreme Court Holding in Helsinn

Director Gaby L. Longsworth, Ph.D. has been quoted in the article, “Industry Insiders: Opinions Mixed in Aftermath of Supreme Court Holding in Helsinn,” published by IPWatchdog.

As covered here [in IPWatchdog], yesterday a unanimous Supreme Court ruled that the America Invents Act’s (AIA’s) language barring patent protection for inventions that were “in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention” under 35 U.S.C. § 102(a)(1) extends to private sales to third parties. The decision upholds pre-AIA Federal Circuit precedent establishing that a “secret sale” could invalidate a patent. The question patent owners have been asking since 2011 was whether the AIA’s addition of the phrase “or otherwise available to the public” overruled the Federal Circuit’s judicial construction of the on-sale bar. “No,” said the High Court.

Gaby views the Supreme Court’s decision as an opportunity to establish strategic coordination between company teams in R&D, marketing, and legal departments as agreements are being struck to bring products to market. Implementing these efforts will help avoid triggering of the on-sale bar provision.