On January 22, 2019, the Supreme Court issued its decision in Helsinn Healthcare v. Teva Pharmaceuticals USA, holding that under § 102(a), as amended by the American Invents Act (“AIA”), an inventor’s sale of an invention to a third party who is obligated to keep the invention confidential could still place the invention “on sale” for purposes of the statutory on-sale bar. The Supreme Court explained that under “settled pre-AIA precedent on the meaning of ‘on sale,’” the Federal Circuit “has long held that ‘secret sales’ can invalidate a patent.” Interpreting § 102(a) as amended, the Supreme Court ruled the scope of the on-sale bar did not change, because Congress re-enacted the same “on sale” language that appeared in pre-AIA § 102(a). Although the AIA added a catchall phrase “or otherwise available to the public” to § 102(a), the Supreme Court found that it was “simply not enough of a change for [it] to conclude that Congress intended to alter the meaning of the reenacted term ‘on-sale.’” It held that “the phrase ‘on-sale’ had acquired a well-settled meaning when the AIA was enacted,” and declined “to read the addition of a broad catchall phrase to upset that body of precedent.”
