One of the most frequent errors committed by inexperienced inventors is the untimely sale or public use of their invention. The sale of a product that includes a new invention—before a patent application is filed—destroys patent rights in many countries. Not so in the United States, where U.S. law provides a 12-month “grace period” to file for patent protection after a public use or sale. Even if an invention is sold, an inventor has 12 months in which to file a U.S. patent application and preserve patent rights. Sometimes, however, even 12 months of grace is not enough. Blunder after blunder has occurred when an invention has been sold, more than 12 months have elapsed, and the inventor has attempted to secure patent rights in the United States. But when is an invention considered to have been sold? And what are the details of a sale that starts the running of the 12-month clock?
Earlier this month, the U.S. Court of Appeals for the Federal Circuit tackled this very important issue in Helsinn Healthcare v. Teva Pharmaceuticals USA, 2016-1284 (Fed. Cir. 2017). Helsinn filed suit against Teva for infringement of Helsinn’s patents relating to Palonosetron—a medication used for treatment of side effects associated with chemotherapy treatment. Teva, however, counter argued, that Helsinn sold its patented medication more than one year before Helsinn’s patent application filing date, and therefore the asserted patents were invalid.
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