Insights: Alerts Supreme Court Holds AIA Did Not Eliminate Secret Prior Art
The Court also held that Helsinn’s position—that the phrase “otherwise available to the public” indicates that a claimed invention is only “on sale” if the sale makes the invention publicly available—placed too much weight on the added catchall phrase. According to the Court, the phrase “otherwise available to the public” merely captures prior art that does not fit neatly into the statute’s enumerated categories, e.g., a public speech disclosing an invention.
Shortly after enactment of the AIA, the USPTO issued guidance interpreting the new language in § 102 as eliminating secret prior art. During oral argument, Mr. Malcom Stewart argued as amicus curiae on behalf of the United States. When questioned by Justice Kagan on whether the new AIA language would be enough to unsettle well-established case law prior to the AIA, however, Mr. Stewart conceded a major issue of the case stating, “No, I think that would be a fairly oblique way of attempting to overturn kind of a settled body of law.” This statement, which was directly at odds with Helsinn’s position, was quoted in the opinion and was likely influential in the Court reaching its 9-0 decision.
Takeaways and recommendations:
-Although many will be disappointed by the Supreme Court’s holding that the AIA did not eliminate secret prior art, it does provide clarity as to the scope of the “on sale” bar under the AIA.
-This decision may be particularly problematic for smaller companies that need to partner with established manufacturing and/or supply-chain companies in order to bring their inventions to market. Creative financing options should be considered that might not rise to the level of a UCC offer for sale. The decision also creates issues for foreign companies unfamiliar with this nuance of US patent practice.
-Unlike foreign jurisdictions, confidentiality agreements should not be relied upon to prevent any loss of patent rights based on any offers for sale of the invention.
-It is critical that those involved in marketing or sales communicate any anticipated commercial activities to in-house or outside counsel to ensure all steps are taken to adequately protect the invention.
-Inventions must be evaluated early to determine whether they should be maintained as a trade secret or protected via patent protection. Once one year has passed from commercialization, the decision cannot be reversed.
-Strongly consider filing an early provisional patent application before any anticipated disclosures or offers for sale to any third party.
Justin L. Krieger
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