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

Date: August 01, 2019

Publication: In House Defense Quarterly

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, In House Defense Quarterly, Summer 2019.

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. Read more.