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IP Alert UPDATE: Supreme Court Says Confidential Sales Can Qualify as Prior Art

January 22, 2019

Today, in a unanimous decision, the U.S. Supreme Court held that “on sale” activity under post-AIA 35 U.S.C. § 102 includes activity that is confidential, affirming the Federal Circuit’s 2017 decision in Helsinn Healthcare S.A. v. Teva Pharmaceuticals (reported in a previous IP alert here).

Writing for the Court, Justice Thomas noted that while “the Court has never addressed the precise question presented in this case,” the Court’s precedents “suggest that a sale or offer of sale need not make an invention available to the public.” Further, because “the phrase ‘on sale’ had acquired a well-settled meaning when the AIA was enacted,” and because Congress had not seen fit to remove “on sale” from the statutory language, the Court concluded that “Congress did not alter the meaning of ‘on sale’ when it enacted the AIA.”

The Court’s decision today appears to have settled this interpretation of the AIA.
 

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