Helsinn: The Only Patent Case to be Decided by the Supreme Court this Term

Inventors can preclude themselves from getting a patent for an otherwise patentable invention if they sell, offer for sell, or make the invention otherwise available to the public more than one year before the effective filling date of the patent application.

When rights to a patent are sold, the terms of the sale may include detailed information about the invention, triggering public disclosure of the invention and starting the one-year clock to file a patent application.  But what happens if the sale does not contain detailed information or the parties sign a confidentiality agreement?  Is there still public disclosure?

These questions will be answered by the Supreme Court in the case of Helsinn Healthcare S.A. v. Teva Pharmaceuticals.  Before the passing of the America Invents Act (AIA), the one-year clock began when an invention was on sale in the United States, whereas after the AIA passed (becoming effective March 16, 2013), the clock began when the invention was on sale, or otherwise available to the public.  This change in language created a dispute of whether sales unavailable to the public should trigger application of the on-sale bar.

The moral of the story is this: be careful when offering your product for sale prior to filing a provisional patent application because you might trigger the one-year clock.  We will follow developments of this case.  Contact us to see how the outcome may affect your patent rights.

The USPTO Issued Its 10 Millionth Patent

On June 19, 2018, the Patent Office issued Patent No. 10,000,000 assigned to Raytheon for “Coherent LADAR Using Intra-Pixel Quadrature Detection.”  The company obtained the patent through the invention of one of its optical engineer, Joseph Marron, who discovered a new way for large laser radars to identify and track objects using reflected light to measure speed and distance.  Simply put, and in the words of Marron, the invention is “similar to a digital camera except it measures speed and distance, and applications include driverless cars or video games. . . . It’s very timely for robotics and 20measurement . . . .”

To commemorate this milestone, Marron and Raytheon executives visited the White House where the president signed the patent certificate.  “This patent represents one of 10 million steps on a continuum of human accomplishment launched when our Founding Fathers provided for intellectual property protection in our Constitution,” said Andei Iancu, director of the USPTO.

Click here to learn more about the history of patents.

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