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Ron Cahill and Micah Miller File Amicus Brief on Behalf of BPLA in Helsinn

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07.24.2017

Ronald E. Cahill, a partner in Nutter’s Intellectual Property and Litigation Departments and chair of the firm’s Intellectual Property Litigation practice group, and Micah W. Miller, an associate in the Intellectual Property Department, filed an amicus brief on behalf of the Boston Patent Law Association (BPLA). The BPLA filed the brief in Helsinn Healthcare S.A. et al. v. Teva Pharmaceuticals USA, Inc. to encourage the Federal Circuit to rehear the case en banc, given the importance of having clear guidance from the Federal Circuit on what is prior art.

Whether the America Invents Act (AIA) changed the scope of the on sale bar of 35 U.S.C. § 102 has been heavily debated since that act’s passage. Prior to the AIA, it was well settled that not only did a sale not need to inform the public of the details of an invention to preclude patentability, the existence of the sale itself did not need to be public. The AIA amended section 102 to provide “[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.”  Thus, whether the inclusion of “or otherwise available to the public” changed the meaning of “on sale” was an open question.  While many commentators argued that the AIA left the on sale bar unchanged, others, including the U.S. Patent Office (see page 11075, col. 1), concluded that the AIA amendments required a sale to make the invention available to the public to be prior art. 

Recently, in Helsinn, for the first time a Federal Circuit panel interpreted the on sale bar under the AIA. The panel held that when the existence of a sale is public, the details of the invention do not need to be publicly disclosed for the sale to be prior art. The panel’s decision, however, avoided resolving the central issue—whether the AIA changed the meaning of “on sale.”

In its brief, the BPLA urges the court to seize this opportunity to make clear whether the meaning of “on sale” as used in 35 U.S.C. §102(a) retains the same meaning that “on sale” had prior to the AIA. In support of its position, the BPLA highlights the substantial confusion regarding the effect of the AIA amendments on the meaning of “on sale” and emphasizes the importance of this issue to all participants in the patent system. Further, the BPLA argues that this is the proper case for en banc rehearing on this issue.

Law360 reported that the BPLA was among several leading intellectual property groups urging the full Federal Circuit to review the decision.

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