The Federal Circuit's decision in Helsinn v. Teva is a reminder of the risks of pre-patent sales activity. The decision was closely followed as it raised the argument that the American Invents Act (AIA) potentially changed what constitutes an offer for sale that would prevent one from obtaining a patent. For a detailed review of Helsinn, see my article in CMBA magazine. Ultimately, the decision maintained the status quo and found that the AIA did not alter the standard for on-sale bars. The current standard mixes commercial law and patent principals considering whether there was a commercial offer for sale, and whether the offer encompassed an invention that was ready for patenting through actual or constructive reduction to practice. The court explained that the offer for sale does not need to disclose the invention nor does the party making the purchase need to be aware that the product being sold actually embodies the invention. Further, the date of the offer is the critical date and not the date of delivery.
In the U.S., there is a one year grace period once an offer for sale is made to apply for a patent protecting the offered product. Foreign countries are more strict and most do not offer any grace period to obtain patent rights. Therefore, care must be taken to ensure that patent applications are timely filed with the general advice being apply for a patent application before any offer for sale is made.
