02 May 2017
Washington DC
Reporter: Barney Dixon
Federal Circuit defines AIA on-sale bar provision
The America Invents Act’s (AIA) on-sale bar provision renders a patent invalid if the invention is sold before the filing date, according to the US Court of Appeals for the Federal Circuit.

Helsinn Healthcare brought the case against Teva Pharmaceuticals, alleging the infringement of four patents relating to medication for reducing nausea and vomiting during chemotherapy.

Teva responded on the grounds that the patents were invalid under the on-sale bar provision of the AIA.

The US District Court for the District of New Jersey disagreed with this argument in its decision.

But on appeal, the Federal Circuit reversed this ruling, stating that the claims of the patents were “subject to an invalidation contract for sale prior to the critical date of 30 January 2002”, and that the “AIA did not change the statutory meaning of ‘on sale’ in the circumstances involved here”.

“The asserted claims were also ready for patenting prior to the critical date.”

If over a year before a patent’s filing date, a sales offer still acts as a bar to a patent, even if the sale is not public.

Matthew Siegal, partner at Stroock & Stroock & Lavan, said: “While the decision is correct, it omits a discussion of the reasoning behind the on-sale bar, so as to ascertain the spirit of the law.”

“Patentees are precluded from extending the term of their patent. If they can begin soliciting offers for the patented goods more than a year before the filing date, they can artificially extend their 20 year.”

More news
The latest news from IPPro Patents
Join Our Newsletter

Sign up today and never
miss the latest news or an issue again

Subscribe now
UPC order reaches UK parliament
26 June 2017 | London | Reporter: Barney Dixon
The UPC is continuing its passage through the UK parliament after a tumultuous election and the recent Conservative-DUP deal
BBVA launches global patent office
26 June 2017 | Bilbao | Reporter: Barney Dixon
Spanish Bank BBVA has created a global patent office to coordinate its intellectual property protection efforts
Jones Day bolsters IP practice
26 June 2017 | Los Angeles | Reporter: Barney Dixon
Law firm Jones Day has added Andrea Jeffries and Emily Tait as partners to its intellectual property practice
Canon awarded $4.4 million in patent infringement case
23 June 2017 | Los Angeles | Reporter: Barney Dixon
Canon has been awarded $4.4 million after a jury found Color Imaging and General Plastic Industrial guilty of wilfully infringing a Canon patent
Patents to get STRONGER with new bill
22 June 2017 | Washington DC | Reporter: Barney Dixon
The bill will make it easier and less costly for patent holders to enforce their patents, in turn strengthening the patent system.
Merchant & Gould hires patent trio
22 June 2017 | New York | Reporter: Barney Dixon
Merchant & Gould has expanded its New York office with the addition of three new intellectual property attorneys.
Lewis Roca Rothgerber Christie adds new patent associate
22 June 2017 | Los Angeles | Reporter: Barney Dixon
Lewis Roca Rothgerber Christie has added Olga Katsnelson as an associate in its intellectual property practice group