January 22, 2019

If a Sale Occurs in a Forest and No One is There to See it, is it Still a Sale? Yes.

By Bryan K. Wheelock, Principal

In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., the Supreme Court affirmed the Federal Circuit that a non-disclosing sale is prior art under post AIA 35 USC §102(a)(1).

35 USC §102(a)(1) states:

A person shall be entitled to a patent unless … the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” 35 U. S. C. §102(a)(1)

At issue was whether or not the sale had to be one “available to the public,” given the language “or otherwise available to the public.” The Supreme Court observed that every patent statute since 1836 has included an on-sale bar, including the one immediately prior to the AIA. The AIA retained the on-sale bar, and added a catch-all phrase. The Supreme Court concluded that this addition was not enough to change the meaning of “on sale.”

The Court noted that while it had never addressed the precise question presented, its precedents suggest that a sale or offer of sale need not make an invention available to the public. In light of this settled pre-AIA precedent on the meaning of “on sale,” the Court presumed that when Congress reenacted the same language in the AIA, it adopted the earlier judicial construction of that phrase. The new §102 retained the exact language used in its predecessor statute (“on sale”) and, as relevant here, added only a new catch-all clause (“or otherwise available to the public”). The Court appeared to agree that the addition of a catch-all phrase was a fairly oblique way of attempting to overturn a settled body of law.

The Supreme Court rejected Helsinn’s argument that this construction read out “otherwise” from the statute, and that the associated words canon requires us to read “otherwise available to the public” to limit the preceding terms in §102 to disclosures that make the claimed invention available to the public. The Court first noted that that the language had acquired a well-settled judicial interpretation, and that the phase “otherwise available to the public” simply captures material that does not fit neatly into the statute’s enumerated categories but is nevertheless meant to be covered. The Court said that “Given that the phrase ‘on sale’ had acquired a well-settled meaning when the AIA was enacted, we decline to read the addition of a broad catch-all phrase to upset that body of precedent.”

While the Supreme Court affirmed the Federal Circuit, it did not seem to agree with their rationale, which depended upon the fact that the sale itself was public even if it was non-disclosing. By extension, it also seems that the Supreme Court would not limit “public use,” another phrase with a well-settled meaning, to disclosing public uses.

Nearly eight years after the passage of the AIA, we finally have some clarity on what is prior art under the statute. At the very least, it looks like the USPTO is going to have to rewrite MPEP 2152.02(d), and hopefully no patents were improperly issued because of the Office’s misunderstanding of post-AIA prior art.