Supreme Court Clarifies Applicability of ‘On-Sale’ Bar to Patented Inventions

ABSTRACT

A Jan. 22 U.S. Supreme Court decision affirmed a ruling that Helsinn Healthcare SA’s patents on anti-nausea medicine Aloxi were invalid because the company had disclosed the drug formulation two years before seeking the patents.

In its unanimous decision affirming the Federal Circuit, the Supreme Court held that the catchall phrase in 35 U.S.C. § 102(a), “or otherwise available to the public,” did not change long-standing precedent regarding application of the on-sale bar.

As a result, commercial sales of an invention by an inventor to a third party who is obligated to keep the invention confidential can qualify as prior art under 35 U.S.C. § 102(a)—the addition of the catchall to 35 U.S.C. § 102 notwithstanding.

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