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SCOTUS Holds Secret Sale as Novelty Destroying in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc

The Supreme Court of the United States (“SCOTUS”) recently held that a sale of an invention to a third party who is contractually obligated to keep the invention confidential places the invention “on sale” within the meaning of 35 U.S.C. § 102(a).

This section of the U.S.C. reads, in part, “A person shall be entitled to a patent unless— (1) 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” (emphasis added).

The invention did not need to have been made available to the public to be considered prior art. The secret sale of the invention was sufficient to destroy novelty for the purposes of patenting the invention. Since the application for the patent had an effective filing date of nearly two years following the sale, SCOTUS did not address whether the one year grace period would have applied.

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