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IPO Daily News™

Tuesday, 22 January 2019

22 January 2019 – Breaking News

* * * *ON-SALE BAR UNDER AIA APPLIES WHERE MERE EXISTENCE OF SALE IS PUBLIC; DETAILS OF INVENTION NEED NOT BE PUBLICLY DISCLOSED

Helsinn Healthcare S.A. v. Teva Pharms. USA, Inc. — Today in an opinion by Justice THOMAS, the U.S. Supreme Court upheld a Federal Circuit decision that Helsinn’s claims were invalid under America Invents Act section 102(a)(1). Helsinn owned four patents directed to intravenous palonosetron formulations for treating chemotherapy-induced nausea, one of which was governed by the AIA. Over one year before filing the first patent application, Helsinn entered into a supply and purchase agreement with MGI Pharma for palonosetron products. A joint press release that announced the parties’ agreement did not include the specific dose of palonosetron.

The Supreme Court agreed with the Federal Circuit “that ‘if the existence of the sale is public, the details of the invention need not be publicly disclosed in the terms of the sale’ to fall within the AIA’s on-sale bar.” “[A] substantial body of law” existed interpreting the pre-AIA on-sale bar, and the Court “presume[d] that when Congress reenacted the same language in the AIA, it adopted the earlier judicial construction.” The addition of the “catchall phrase ‘or otherwise available to the public’” was “simply not enough of a change for [the Court] to conclude that Congress intended to alter the meaning of the reenacted term ‘on sale.’”
(1 to 4 stars rate impact of opinion on patent & trademark law)


Law & Advocacy

Friday, February 21, 2014

2014 USPTO BUDGET WILL ALLOW HIRING, SATELLITE OFFICES

During the quarterly meeting of the USPTO’s Patent Public Advisory Committee (PPAC), Chief Financial Officer TONY SCARDINO reported that the 2014 appropriations bill signed in January funds the USPTO at $3.024 billion – $90.8 million above the fiscal 2013 enacted level and $238.3 million above the fiscal 2013 sequestration level. The budget will allow the USPTO to hire 1,000 patent examiners and 63 administrative patent judges and provides funding related to opening satellite offices in San Jose, Denver, and Dallas. Projected 2014 spending is estimated at $2.948 billion. The White House will release its fiscal 2015 budget on March 4.


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