FILE PATENTS NOW, Sell Later – The On-Sale Bar Is Alive and Kicking!
As you have probably heard us say more than once, you need to file a patent application BEFORE you sell or offer to sell your invention. Under the America Invents Act (“AIA”), if you sell or offer to sell your invention before filing a patent application, you are not entitled to patent rights in the United States. This rule of law is commonly referred to as the “on-sale bar.” A 2017 Federal Circuit Court decision affirmed the broad scope and drastic consequences of the “on-sale bar.”
In Helsinn v. Teva, the Court considered four patents relating to a drug that helps reduce the side effects of chemotherapy. Two years prior to filing any patent applications, Helsinn agreed to supply a company with the subject matter of the patents. This sale was announced in a joint press release and in SEC filings, but the exact details of the invention were not disclosed to the public.
After Helsinn sued Teva for infringement of various claims of those patents, Teva argued that the patents were invalid because of the prior sale. The Supreme Court agreed and found that the press release barred patentability, despite the fact that it did not disclose the details of the invention.
The Helsinn decision stands as a not-so-gentle reminder that any sale or any offer to sell an invention prior to filing a patent application is a disqualifier, even if the sale or offer to sell does not disclose the details of the invention.
Bottom-line – Do not sell or offer to sell your invention before you file a patent application.