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.”

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