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2 May 2017Americas

Federal Circuit reverses district court’s on-sale bar ruling

The US Court of Appeals for the Federal Circuit ruled yesterday that a patent is invalid if the invention was sold before being patented, even if the invention was not publicly disclosed.

In a case between Helsinn Healthcare and Teva, the court noted that a previous decision found the patents at issue to be valid. The case is an appeal from the US District Court for the District of New Jersey.

Helsinn is the owner of the four patents involved—US numbers 7,947,724; 7,947,725; 7,960,424 and 8,598,219—which are all directed to reducing the likelihood of chemotherapy-induced nausea and vomiting.

The company sued Teva alleging that the filing of Teva’s Abbreviated New Drug Application infringed its patents, of which three are governed by the pre-America Invents Act (AIA) statute.

The district court concluded that there was a commercial offer for sale before the “critical date”, but that the invention was not ready for patenting before then.

According to the Federal Circuit’s ruling, all four of the patents in-suit claim priority to a provisional patent application filed on January 30, 2003, but the critical date for the on-sale bar is one year earlier, January 30, 2002.

With regard to the fourth patent involved, which is governed by the AIA, the district court concluded “that there was no commercial offer for sale because the AIA changed the relevant standard and that, in any event, the invention was not ready for patenting before the critical date”.

But the Federal Circuit reversed and found that the asserted claims of the patents-in-suit were subject to an invalidating contract for sale.

It said that the AIA did not change the statutory meaning of “on sale” in these circumstances, and added that the asserted claims were also ready for patenting before the critical date.

The Federal Circuit said in its ruling: “We conclude that the invention was reduced to practice and therefore was ready for patenting before the critical date.”

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More on this story

Americas
26 June 2018   The US Supreme Court has agreed to hear a dispute over whether confidential sales of an invention can trigger the on-sale bar and invalidate a patent under the America Invents Act.

More on this story

Americas
26 June 2018   The US Supreme Court has agreed to hear a dispute over whether confidential sales of an invention can trigger the on-sale bar and invalidate a patent under the America Invents Act.

More on this story

Americas
26 June 2018   The US Supreme Court has agreed to hear a dispute over whether confidential sales of an invention can trigger the on-sale bar and invalidate a patent under the America Invents Act.