The Supreme Court agreed to hear a case regarding potential changes to the on-sale bar rule in the America Invents Act (AIA). In general, the on-sale bar provides that sales of an invention that occur more than a year before the priority date of a patent can be used as prior art to invalidate the patent. The question to be decided by the Supreme Court is whether such sales are still invalidating under the AIA if they are “secret sales”—e.g., the buyer is obligated to keep the sale confidential.

In the present case, the patent owner, Helsinn, entered a license agreement with a third-party customer. While the fact that Helsinn had entered into a license was public, the actual details of the claimed invention (i.e., the pharmaceutical drug subject of the sale to that customer) were not. The license agreement with the third party customer was entered into more than one year before Helsinn filed for its patent. Before the AIA, the statutory language of the on-sale bar stated that an entity was entitled to a patent unless the invention was “in public use or on sale in this country, more than one year prior to the date of application.” Because it did not specify or suggest that the sales had to be public, secret sales and public sales alike were invalidating.

Under the AIA, however, the on-sale bar language was changed to say that an entity is entitled to a patent unless the invention was “in public use, on sale or otherwise available to the public” at least one year prior to the date of application. Patent owner Helsinn is urging that the “otherwise available to the public language”—which was not included in the pre-AIA version of the statue—means that sales must make an invention available to the public in order to be invalidating. Defendant Teva disputes that language modifies the on-sale bar. The Court is expected to hear the case later this year.