In Helsinn v. Teva, the Supreme Court held that Congress did not alter the meaning of "on sale" when it enacted the LeahySmith America In vents Act and, therefore, an inventor's sale of an invention to a third party who is obligated to keep the invention confidential may qualify as prior art. The Court relied upon precedent which suggested that a sale or offer of sale need not make an invention available to the public to qualify as prior art. Instead, the on-sale bar only required that the invention be the subject of a commercial offer for sale and ready for patenting. Unfortunately, the Court's nine-page opinion fell short of expectations. Not only was the Court's decision at odds with the legislative history of the Leahy-Smith America Invents Act, it will undoubtedly create unnecessary confusion regarding the proper implementation of the on-sale bar. Further, this decision interferes with Congressional intent to harmonize the United States patent system with those of other countries. Most importantly, this decision will have a particularly detrimental effect on small and midsize pharmaceutical companies who frequently rely on partnerships with larger, more profitable entities in order to continue with their research and development of new drugs.
Helsinn v. Teva: A Big Blow to Small Pharma,
Loy. Consumer L. Rev.
Available at: https://lawecommons.luc.edu/lclr/vol31/iss3/7