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December 06, 2018


Hey Kevin,

I'm frankly astounded by the advocate for Helsinn trying to argue at the outset that the meaning of "on sale" prior to the AIA (Abominable Inane Act) meant only public sales. Justice Kavanaugh was absolutely correct to jump on that mischaracterization, especially in view of Metallizing Engineering (authored by Judge Learned Hand).

The key issue here is what does "otherwise available to the public" mean, and does it change the prior view of what constitutes an "on sale" bar to the INVENTOR as to whether to whether that activity is public or private (e.g., under an agreement involving confidentiality and involving only the party/parties to that agreement).

I do agree with Justice Kavanaugh that "otherwise available to the public" was "a terrible clarification" in terms of the wording (just one, of many, problematical wording issues in the AIA), but I wouldn't necessarily agree with his assessment that this wording didn't reflect Congress's intent to change the meaning of "on sale" as it relates to private versus public sales by the inventor. In that regard, I would suggest considering Joe Matal's "A Guide to the Legislative History of the America Invents Act: Part I" and in particular page 478, footnote 280 which quotes a statement by Senator Orrin Hatch as to the meaning of "otherwise available to the public":

To the extent that nondisclosing Metallizing Engineering uses are deemed to be outside the reach of the word “disclosure,” Senators Leahy and Hatch’s emphasis on “parallelism” and complete coverage in § 102(b) for all that is prior art under § 102(a) simply confirms the understanding that prior art under the AIA will be limited to what is available to the public. Thus, secret nondisclosing activities will not become prior art in the first place.

Note further that, at 450 of Matal's Guide, that the term "prior art" also refers to activities by the inventor, and that "[i]n light of the AIA’s repeal of all 'loss of right to patent' provisions based on secret activities from § 102, those words have been removed from the title of § 102." In other words, instead of being a "bar," the AIA has dispensed with that concept and instead considers whether or not the inventor's activities constitute "prior art." So the argument can be rightfully made that the AIA intended to remove such a private sale by Helsinn that does not "otherwise" make the claimed invention "available to the public." Again, the wording in the AIA in this regard could have been stated more clearly, but the legislative history, as reflected in Matal's Guide suggests Helsinn's confidential sales agreement shouldn't be treated as "prior art" under new 102(a) relative to the inventor, and therefore didn't invalidate Helsinn's patent.

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