CALL US: 206.533.3854
CALL US  206.533.3854
Rhoda Baer (Photographer) - This image was released by the National Cancer Institute, an agency part of the National Institutes of Health, with the ID 4457 (image), https://commons.wikimedia.org/w/index.php?curid=24029425.

Supreme Court Rules That Confidential Sales Are Still Sales

US Supreme Court
Says sale of secret treatment
Counts as prior sale

The US Supreme Court has affirmed a decision by the Federal Circuit that the sale of an invention to a customer obligated to keep the invention confidential is still considered a sale that can invalidate a patent.

Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc. involved a treatment for chemotherapy-induced nausea and vomiting using the chemical palonosetron, sold by Helsinn.

Helsinn entered into agreements with another company giving the other company the right to distribute, promote, market, and sell a 0.25 mg dose of palonosetron. The agreements required that the marketing company keep confidential any proprietary information received under the agreements.

Nearly two years later, in 2003, Helsinn filed a provisional patent application covering a 0.25 mg dose of palonosetron. Over the next 10 years, Helsinn filed four patent applications that claimed priority to the 2003 date.

In 2011, Teva sought approval to market a generic 0.25 mg palonosetron product. Helsinn sued Teva for patent infringement. Teva contended that the relevant patent was invalid under the “on sale” provision of the America Invents Act (AIA).

The on-sale provision states that:

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) (emphasis added).

The District Court held that the AIA’s “on sale” provision didn’t apply because the public disclosure of the agreements didn’t disclose the 0.25 mg dose. The Federal Circuit reversed, finding that the agreement was publicly disclosed, regardless of whether the details of the invention were publicly disclosed.

The Supreme Court held that a commercial sale to a third party required to keep the invention confidential may still place the invention “on sale” under §102(a).

Related Articles

When is a patented product sold “within the United States”?

When is a product
“sold in the United States”?
It’s complicated.

Read More

Do AI content generators violate underlying IP rights?

IP owners sue
AI art generators.
What counts as “fair use”?

Read More

Patent Wars Come to Crypto

Veritaseum
Brings lawsuit against Circle
In patent dispute

Read More

Stay Informed

Sign up to receive Patent Poetry—a monthly roundup of key IP issues in our signature haiku format. Four articles (only 68 syllables); zero hassle.

SECTORS

HIGH
TECHNOLOGY

Artificial Intelligence

Blockchain & Cryptocurrency

Computer Technology & Software

Consumer Electronics

Electrical Devices

MECHANICAL
& PRODUCTS​

Cleantech

Mechanical Devices

Consumer & Retail Products

Hardware & Tools

Toys & Games

LIFE SCIENCES
& CHEMISTRY​

Biotechnology

Chemical Compounds

Digital Health

Healthcare Products

Pharmaceuticals

BRANDING
& CREATIVE​

Books & Publications

Brand Creation

Luxury Products

Photography & Video

Product Design