Helsinn Healthcare v. Teva Pharmaceuticals USA |

Background: The Pre-AIA On Sale Bar

Pfaff v. Wells Electronics, Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co Pfaff v. Wells Electronics Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co |

Congress Rewrites the On Sale Bar

or otherwise available to the public

As Chairman [Lamar] Smith most recently explained in his June 22 remarks, “contrary to the current precedent, in order to trigger the bar in new 102(a) in our legislation, an action must make the patented subject matter "available to the public" before the effective filing date.” … When the committee included the words "or otherwise available to the public" in section 102(a), the word “otherwise” made clear that the preceding items are things that are of the same quality or nature.

As a result, the precedent events and things are limited to those that make the invention “available to the public.” … Once an invention has entered the public domain, by any means, it can no longer be withdrawn by anyone. But public uses and sales are prior art only if they make the invention available to the public.

One of the implications of the point we are making is that subsection 102(a) was drafted in part to do away with precedent under current law that private offers for sale or private uses or secret processes practiced in the United States that result in a product or service that is then made public may be deemed patent-defeating prior art. That will no longer be the case. In effect, the [AIA] imposes an overarching requirement for availability to the public.

'Helsinn Healthcare v. Teva Pharmaceuticals USA'

public Smith after use on sale Robert L. Maier is a patent trial lawyer and intellectual property partner in the New York office of Baker Botts.