Secret Sale Can Still Qualify as Prior Art Under America Invents Act

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On January 22, 2019, the US Supreme Court decided Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc. , which held that a “secret sale” can still qualify as prior art under the America Invents Act (AIA) even if the third party the invention is sold to is obligated to keep the invention confidential.

In other words, if an inventor sells their invention prior to having  a patent application on file, that sale can void US patent rights regardless of the existence of a legal obligation of confidentiality—such as under a Non-Disclosure Agreement.  While this is more a clarification of the law rather than a change, it does make it clear that inventors should not sell or offer to sell an invention without at least having a provisional or utility patent application on file.

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