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.