New Patentability Pitfall: Publically Announced Sales/Offers

Entrepreneurs now have a new pitfall to avoid in trying to obtain a patent.  Namely, if they publicly announce a sale of a product/service incorporating an otherwise patentable idea, that public announcement of the sale (not the idea) now operates to instantly invalidate any subsequently filed patent application.  

 

This result occurs whether details of the idea were disclosed or were held secret/private.  Presumable, even a mere offer to sell the product would also be instantly fatal if announced publicly.  For those interested see: Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc. (decided May 1, 2017).  In Helsinn, the patent owner publicly announced a sale of their product in an SEC filing while withholding certain key details of the underlying invention.  Yet, this decision rendered the patents at issue invalid under the on-sale bar rule.

Thus, it would seem that maintaining secrecy about a sale would prevent application of the fatal on-sale-bar rule to an otherwise patentable idea (provided that the idea remains secret).  While the panel that decided this case did state that their decision was a narrow one, this Blogger fears that this case will be read broadly.  And that it will come to stand for the proposition that all sales and/or offers will invalidate subsequently filed patent applications whether the sales are publicly announced or not.  Indeed, this Blogger has already seen one blog (less than 48 hours from the decision) that stated just that.  

Accordingly, Entrepreneurs should avoid 1) publicly disclosing their ideas AND (CAPS INTENTIONAL) 2) publicly announcing any sales or offers that they might make before filing their patent application.  Instead, Entrepreneurs should file at least a provisional patent application before making any offer (or sale) involving a potentially patentable idea.  Of course, this strategy was a good approach before Helsinn and is even more important to apply now.   

We at the Villhard Patent Group would welcome an opportunity to discuss your ideas with you.  You can find more information about us at www.villhardpatents.com.  Or you can call us at (512)-897-0399.  We look forward to hearing from you.