In Helsinn Healthcare v. Teva Pharmaceutical, the United States Supreme Court held that a commercial sale to a third party who is required to keep the invention confidential may place the invention "on sale" under the American Invents Act.
Justice Thomas speaking for a unanimous Court stated that the "America Invents Act (AIA) bars a
person from receiving a patent on an invention that was 'in public use, on sale, or otherwise available to the public
before the effective filing date of the claimed invention.' 35 U. S. C. §102(a)(1). This case requires us to decide
whether the sale of an invention to a third party who is
contractually obligated to keep the invention confidential
places the invention 'on sale' within the meaning of
§102(a)."
"More than 20 years ago, this Court determined that an
invention was 'on sale' within the meaning of an earlier
version of §102(a) when it was 'the subject of a commercial
offer for sale' and 'ready for patenting.' Pfaff v. Wells Electronics, Inc., 525 U. S. 55, 67 (1998). We did not further require that the sale make the details of the invention available to the public. In light of this earlier construction, we determine that the reenactment of the
phrase 'on sale' in the AIA did not alter this meaning.
Accordingly, a commercial sale to a third party who is
required to keep the invention confidential may place the invention 'on sale' under the AIA."
For additional commentary see Professor Ronald Mann's Opinion analysis: Justices affirm ruling that secret sales of invention bar later patent and my post America Invents Act - On Sale Bar, 35 USC 102.
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