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Thompson Hine LLP, a full-service business law firm with approximately 400 lawyers in 8 offices, was ranked number 1 in the category “Most innovative North American law firms: New working models” by The Financial Times and was 1 of 7 firms shortlisted for The American Lawyer’s inaugural Legal Services Innovation Award. The firm has been recognized by the National Law Journal as a Legal Technology Trailblazer and featured by Bloomberg for its innovative service delivery models, which drive accuracy and predictability. The firm’s commitment to innovation is embodied in Thompson Hine SmartPaTHTM – a smarter way to work – predictable, efficient and aligned with client goals. For more information, please visit ThompsonHine.com and ThompsonHine.com/SmartPaTH.

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Clif McCann and David Jaglowski’s article “The U.S. Supreme Court’s Helsinn Decision Makes Six Years of U.S. Patents Vulnerable to “On Sale” Prior Art,” was published in DRI Intellectual Property Litigation, <em>In House Defense Quarterly, </em>Summer 2019.

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To the surprise of the USPTO and many patent practitioners, an inventor’s sale of an invention can qualify as invalidating prior art under the America Invents Act, regardless whether the sale was public or private. The 2011 America Invents Act (AIA) changed U.S. patent law from a first-to invent to a first-to-file system, starting with new patent applications filed on or after March 16, 2013. The AIA also made fundamental changes to the requirements of novelty and nonobviousness for inventions claimed in those applications. Most of the changes were easily understood, but until January 22, 2019, it was unclear whether Congress intended to relax a certain condition for patentability. The Supreme Court’s answer that day came as a surprise to the U.S. Patent and Trademark Office and many patent practitioners. As a result, many AIA patents issued before January 22 are vulnerable to unexpected invalidity challenges. <strong><a href="https://admin.thompsonhine.com/wp-content/uploads/1137/doc/McCann-Jaglowski.pdf" target="_blank" rel="noreferrer noopener">Read more</a></strong>.

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Partner

Clifton E. McCann

Counsel

David R. Jaglowski

Intellectual Property

The U.S. Supreme Court’s Helsinn Decision Makes Six Years of U.S. Patents Vulnerable to “On Sale” Prior Art