TAKEAWAY: The Federal Circuit maintains the status quo on secret commercialization for Post-AIA on-sale bar.
Prior to implementation of the American Invents Act (AIA), secret commercialization of an invention, such as secret offers for sale and sales that did not fully disclose the scope of the invention, were nonetheless prior art to the seller. The language of AIA § 102(a)(1) that “[a] person shall be entitled to a patent unless…the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention…” raised the question of weather such secret commercialization was going to be considered prior art under the AIA. In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., et al, the Federal Circuit held that, “…after the AIA, if the existence of the sale is public, the details of the invention need not be publicly disclosed in the terms of sale.” The Federal Circuit noted that it was unwilling to go against the long-standing precedent that such secret commercialization was prior art without an express statement from Congress. Thus, while the Helsinn decision only addresses whether a non-public disclosure of the scope of the invention in a public sale can be prior art under the AIA, the decision suggests an unwillingness to change precedent with respect to secret offers for sale or secret uses.