Invention, marketing and the long and winding road to a patent

| Jan 21, 2021 | Patents |

Invention is the lifeblood of American commerce. New products and processes drive innovation and make everyday life healthier, safer and more manageable. Inventors can protect their ideas from copycats and thieves when the U.S. government patents them.

Novelty and non-obviousness have always been required of patentable inventions. And there have long been three things inventors could do to “shoot themselves in the foot” and forfeit their patent rights: publish, publicly use or offer their invention for sale more than one year prior to applying for a patent.

U.S. patent law changed drastically in 2013 with the enactment of the America Invents Act. One big change was awarding patents to those “first to file” rather than “first to invent.”  The novelty sections of the law changed too. Left unanswered when the law went into effect was whether an offer for sale of an invention made in secrecy would start the one-year clock running regarding the deadline to file a patent application.

A 2019 Supreme Court ruling attempted to clarify that question, which continues to have major implications for the intellectual property community.

In Helsinn Healthcare v. Teva Pharmaceuticals, the Court ruled that inventions offered in private or public sales does start the clock. The 9-0 decision narrowly addressed the 2011 America Invents Act (AIA), which Congress passed in part to broaden protections for inventors. The Court said an inventor who sells their invention to a third party that is obligated to keep the product confidential is considered “prior art” and ineligible for patenting.

What the Supreme Court ruled

The Helsinn Healthcare case involved the owner of a new drug who sold exclusive distribution and marketing rights to another company a year before applying for a patent. The deal was announced publicly. However, the dosage in the patent application remained a secret.

Justice Clarence Thomas’ nine-page ruling said the AIA failed to change regulations on public use and sale of inventions. The Supreme Court relied on opinions dating back to 1829 that determined a public sale lifts the cloak of confidentiality from the invention. The “oblique” language of the AIA could not overturn two centuries of interpretation, Thomas explained.

The catchall phrase in the law “or otherwise available to the public” was “simply not enough of a change… to conclude that Congress intended to alter the meaning of the re-enacted term ‘on sale.’”

Expect the ruling to continually drive the patent eligibility debate and intellectual property decisions until or unless lawmakers readdress the AIA.

Get an expert opinion

The patent process is incredibly complex, whether you are building a better fishing rod or engineering a new missile defense system. Legal documents cover everything from tools and machines to software and chemical experiments, including methods, manufacturing and marketing.

It takes time to determine whether your idea is unique or already patented. Parts of it may be ineligible or commercially available. What is more, patent examiners are bound to have questions about materials and processes.

A certified patent attorney and expert in intellectual property law is invaluable when trying to take your confidential innovation from blueprint to market.