Date: August 01, 2019
Publication: In House Defense Quarterly
Clif McCann and David Jaglowski’s article “The U.S. Supreme Court’s Helsinn Decision Makes Six Years of U.S. Patents Vulnerable to “On Sale” Prior Art,” was published in DRI Intellectual Property Litigation, In House Defense Quarterly, Summer 2019.
To the surprise of the USPTO and many patent practitioners, an inventor’s sale of an invention can qualify as invalidating prior art under the America Invents Act, regardless whether the sale was public or private. The 2011 America Invents Act (AIA) changed U.S. patent law from a first-to invent to a first-to-file system, starting with new patent applications filed on or after March 16, 2013. The AIA also made fundamental changes to the requirements of novelty and nonobviousness for inventions claimed in those applications. Most of the changes were easily understood, but until January 22, 2019, it was unclear whether Congress intended to relax a certain condition for patentability. The Supreme Court’s answer that day came as a surprise to the U.S. Patent and Trademark Office and many patent practitioners. As a result, many AIA patents issued before January 22 are vulnerable to unexpected invalidity challenges. Read more.
You must agree to Thompson Hine's terms and conditions set forth in the disclaimer below before submitting any email to us:
This website provides general information about Thompson Hine LLP for the convenience of visitors to the site. The site and the content within it are not intended to establish and their use does not establish an attorney/client relationship between Thompson Hine and any visitor. Information on the website is not legal advice. Do not send confidential information to any of our lawyers without first obtaining specific authorization. This website includes photographs of our lawyers and staff. Some of the design images and photographs on our website may be of actors depicting fictional scenes. Statements on this website of prior results do not guarantee a similar outcome.
This website may be considered attorney advertising in some jurisdictions.