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Under U.S. patent law, an offer to sell or a sale of an invention starts a one-year grace period during which the owner of the invention must file a patent application with the U.S. Patent and Trademark Office or else forfeit their right to obtain patent protection for it. The grace period runs even if the offer for sale or sale of the invention is made in secret. This aspect of U.S. patent law is unique in the world, and gives rise to situations in which a U.S. inventor’s secret offer for sale of their invention forfeits their right to a U.S. patent, and yet the inventor remains eligible to obtain patents for that same invention in other countries.

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In an effort to harmonize U.S. patent laws with the patent laws of other developed countries, Congress passed the America Invents Act (AIA), which became effective September 16, 2012. The AIA amended the language of the part of the Patent Act pertaining to the effect of a sale of the invention in a way that was viewed by many—including Senators Kyle and Leahy who were involved in drafting the AIA—as eliminating the effect of a secret offer for sale or sale starting the one-year clock.

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However, those hopes were dashed on January 22, 2019, when a unanimous Supreme Court held that under the AIA a commercial sale places an invention “on sale” even if the sale was conducted in private. In Helsinn Healthcare S.A. v. Teva Pharms. USA, Inc., the Court held that the AIA did not change this aspect of the pre-AIA patent law. Thus, any sale—even a secret one—still may operate to forfeit the right to a patent, or invalidate an issued patent where the secret offer for sale or sale had occurred prior to the grace period. The Helsinn decision underscores the value in filing patent applications for a new product or process early in the product life cycle. Unfortunately, American inventors will have to wait for Congress to amend the Patent Act further to harmonize this aspect of U.S. patent laws with those of other countries.

Until such further amendments are made, if ever, inventors and technology companies should observe the following guidelines to maximize their ability to protect their inventions:

For more information, please contact:

Theodore D. Lienesch 937.443.6958 <a href="mailto:Ted.Lienesch@ThompsonHine.com">Ted.Lienesch@ThompsonHine.com</a>

Clifton E. McCann 202.263.4159 <a title="Email" href="mailto:Clifton.McCann@ThompsonHine.com">Clifton.McCann@ThompsonHine.com</a>

Larry D. Williams Jr., Ph.D. 513.352.6534 <a href="mailto:Larry.WilliamsJr@ThompsonHine.com">Larry.WilliamsJr@ThompsonHine.com</a>

or any member of our <a href="http://www.thompsonhine.com/services/intellectual-property" target="_blank" rel="noreferrer noopener">Intellectual Property</a> practice group.

This advisory bulletin may be reproduced, in whole or in part, with the prior permission of Thompson Hine LLP and acknowledgment of its source and copyright. This publication is intended to inform clients about legal matters of current interest. It is not intended as legal advice. Readers should not act upon the information contained in it without professional counsel.

This document may be considered attorney advertising in some jurisdictions.

https://admin.thompsonhinestaging.contentpilot.net/wp-content/uploads/2022/04/Inventors_Beware_-_Even_Secret_Activity_Can_Sink_Your_Patent.pdf

Inventors Beware: Even Secret Activity Can Sink Your Patent

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