On Sale and Public Use Bars to Patentability: Minimizing the Risk of Patent Ineligibility or Invalidation

Recording of a 90-minute CLE webinar with Q&A


Conducted on Thursday, March 15, 2018

Recorded event now available

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Program Materials

This CLE webinar will examine the on-sale and public use bars to patentability/validity and the impact of the AIA on these statutory bars. The panel will also discuss recent court treatment and offer best practices to minimize the risk of patent ineligibility or invalidation.

Description

There have been significant Federal Circuit decisions in recent years on on-sale and public use bars to patentability. For example, in Merck & CIE v. Watson Labs. (2016), the Federal Circuit addressed the minimum requirements for an on-sale bar defense to patent infringement, concluding, “An offer to sell is sufficient to raise the on-sale bar, regardless of whether that sale is ever consummated.”

In Helsinn Healthcare v. Dr. Reddy’s Labs (2017), the Federal Circuit issued its first interpretation of the AIA on-sale bar standard for “secret” sales and “secret” offers-for-sale, concluding that as long as the sale was public, the sale was an invalidating event, even if the details of the invention could not be determined from the sale. Helsinn’s petition for rehearing en banc was denied.

Adding to the mix, in The Medicines Co. v. Hospira (2016), the en banc Federal Circuit unanimously overturned an earlier panel decision finding an on-sale bar. The en banc court held that to be “on sale” under pre-AIA §102(b), a product must be the subject of a commercial sale or offer for sale, and a commercial sale is one that bears the general hallmarks of a sale per Section 2-106 of the Uniform Commercial Code. The en banc court concluded that no invalidating commercial sale took place.

Patent counsel must understand the on-sale and public use bars and how courts have treated them under both AIA and pre-AIA law. Counsel should carefully guide patent applicants to avoid any on-sale activity or other conduct that would preclude patent protection. Counsel may need to move quickly to take corrective action, considering the implications of both AIA post-grant review and district court cases.

Listen as our authoritative panel of patent attorneys examines the on sale and public use bars to patent eligibility and recent court treatment of these statutory bars. The panel will also offer best practices to minimize the risk of having a patent deemed ineligible or invalidated due to the on sale and public use bars.

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Outline

  1. On sale bar
    1. Pre-AIA
    2. Under the AIA
    3. Implications of the AIA
    4. Recent court treatment
  2. Public use bar
    1. Pre-AIA
    2. Under the AIA
    3. Implications of the AIA
    4. Recent court treatment
  3. Best practices

Benefits

The panel will review these and other key issues:

  • How do AIA changes impact the on sale bar and the public use bar?
  • How are courts and PTAB treating the on-sale bar and the public use bar?
  • What best practices can counsel employ to adapt patent prosecution and enforcement strategies?

Faculty

Irving, Thomas
Thomas L. Irving

Partner
Finnegan Henderson Farabow Garrett & Dunner

Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution,...  |  Read More

Hines, Doris
Doris Johnson Hines

Partner
Finnegan Henderson Farabow Garrett & Dunner

Ms. Hines focuses her practice on patent litigation and has led teams in U.S. district courts, the U.S. International...  |  Read More

Brown, Daniel
Daniel G. Brown

Partner
Latham & Watkins

Mr. Brown specializes in patent litigation with a particular focus on chemical, pharmaceutical and life sciences...  |  Read More

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