Page 31 - November 2018 | Cleveland Metropolitan Bar Journal

INTELLECTUAL PROPERTY

Prior to its current iteration, the Patent such as drawings or descriptions, that under Section 102. With the speed at
Act barred the patentability of an invention would allow someone of ordinary skill in which information becomes public in the
that was “ … in public use or on sale in this the relevant field to produce the invention, digital age, often an inventor is his own
country, more than one year prior to the it is ready for patenting. worst enemy from a prior art perspective.
date of the application for patent.” 35 U.S.C. From Pennock to Pfaff, the Supreme Court Pre-patent filing activities including prior
102(b) (2006). has viewed prior sales critically interpreting publication, public use, offers for sale and
In 2013, the AIA overhauled U.S. patent “on sale” within the statute to restrict actual sales often destroy patentability.
law, making it more consistent with patentability. Following this same logic, one Ensuring that inventors are cognizant
foreign patent laws. Section 102 now states might conclude that the Court would affirm of these potential pitfalls early in the
[emphasis added]: the Federal Circuit finding that consistent use development process is critical.
of the wording “on sale” within the AIA Section While the possibility that the Court would
(A) A person shall be entitled to a 102 applies to any sales activity regardless of eliminate secret sales from triggering an on-
patent unless – whether it is public or secret. In other words, sale bar may make it easier for some entities
(1) the claimed invention was … in a sale is a sale regardless of secrecy. But the to reduce the likelihood of an on-sale bar
public use, on sale, or otherwise available Supreme Court’s recent track record may through strategic use of confidentiality
to the public before the effective filing suggest another outcome is possible. provisions in their sales agreements, such
date of the claimed invention. Since 2014, the Supreme Court has heard confidentiality is not always practical or
Unlike foreign laws that apply an more than 16 patent cases. The Court has obtainable in arm’s length transactions.
absolute on-sale bar, the AIA retained reversed the Federal Circuit in all but two With the AIA’s transition of our patent
a one-year grace period for disclosures of these cases. This would suggest that the system to a first-to-file basis, the adage
made by or derived from the inventor. Court may have granted cert. to side with “file early and often” may provide the safest
Helsinn and its supporters. course of action.
Helsinn has argued that the addition of the The convoluted facts of Helsinn may allow
language “or otherwise available to the public” the Court to confirm that the AIA removed
changed the meaning of on sale to exclude secret sales, yet affirm the Federal Circuit Shannon V. McCue is a partner
secret sales from triggering an on-sale bar. In based on whether Helsinn’s sale is secret. in BakerHostetler’s Cleveland
contrast, Teva argued that since the on sale Such a holding may indicate that despite office. His practices includes a
language did not change, its treatment should confidentiality obligations hiding details providing a wide array of
be the same as before the AIA’s enactment. of the invention from the public, public intellectual property counsel,
The seminal case for considering reporting of the actual sale is sufficient to including creating strategies that leverage IP
whether there is an on-sale bar has been trigger the on-sale bar. rights in tandem with clients’ business goals.
Pfaff v. Wells Electronics. 525 U.S. 55 (1998). As a result, the nuances of the Supreme Mr. McCue has written several publications
In Pfaff, the Supreme Court explained that Court’s decision can have great practical on IP strategy, including the American Bar
1) the sale must involve a commercial impact when a company is balancing the Association’s Model Jury Instructions:
sale or offer for sale, and 2) the invention confidentiality of research and development Copyright, Trademark and Trade Dress
being sold must be ready for patenting. Id with duties to report sales activities. Litigation, and a two-part series on social
at 68. The Court referenced the carefully media policies published in the National
crafted bargain that encourages both the Practical takeaways Licensing Journal. Mr. McCue has been a
creation and public disclosure of new A bedrock of the patent system is the CMBA member since 2017. He can be reached
and useful advances in technology for a question of whether an invention is new at (216) 621-0200 or smccue@bakerlaw.com.
limited monopoly. It also referenced its
own recognition in Pennock of a reluctance
to allow an inventor to remove existing
knowledge from public use as underlying
the on-sale bar. Finally, Pfaff pointed to
Judge Hand’s statement in Metallizing as
succinctly identifying the two essential
conditions of the on-sale bar. With these
policies in mind, the Court took a broad
view toward application of the on-sale bar
by indicating that “ready for patenting”
was not limited to proof that the inventor
had successfully reduced the invention to
practice through construction of a product
or actual practice of a method. Instead, it
held that having sufficient information,
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