On Sale and Public Use Bars to Patentability: Minimizing 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 Helsinn Healthcare v. Dr. Reddy’s Labs (2019), the Supreme Court 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. In The Medicines Co. v. Hospira, Inc., 881 F.3d 1347 (Fed. Cir. 2018), the Federal Circuit reiterated the principle of "no supplier exception" to the on-sale bar. Barry v. Medtronic, 914 F.3d 1310 (Fed. Cir. 2019), provides an analysis of what the "ready for patenting" prong of Pfaff means for on-sale and public use of a method of treatment claim.

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.