Secret sales and patents
Helsinn Healthcare S. A. v. Teva Pharmaceuticals USA
In brief
The Supreme Court agreed that a commercial sale can count as an on-sale event even when the buyer must keep the invention secret.
- Where it stands
- Decided
Decided 5-4 · January 22, 2019 · Opinion by Justice Thomas
- What it’s about
- Helsinn Healthcare’s patent dispute with Teva turned on whether a sale to a buyer bound to keep the invention secret could count as earlier information that defeats a patent (prior art) under the America Invents Act.
- Who it affects
- A buyer’s promise to keep an invention secret does not, by itself, stop a qualifying commercial sale from counting against patentability under the America Invents Act.
Summary: written with AI from the case record.
What it's about
The Supreme Court agreed with the Federal Circuit (affirmed), leaving its ruling in place.
The America Invents Act uses an “on-sale” rule to help decide whether an invention can receive a patent.
Question presented
Whether, under the Leahy-Smith America Invents Act, an inventor's sale of an invention to a third party that is obligated to keep the invention confidential qualifies as prior art for purposes of determining the patentability of the invention.
What the Court decided
Holding
A commercial sale to a third party who is required to keep the invention confidential may place the invention “on sale” under §102(a). The patent statute in force immediately before the AIA included an on-sale bar. This Court’s precedent interpreting that provision supports the view that a sale or offer of sale need not make an invention available to the public to constitute invalidating prior art. See, e.g., Pfaff v. Wells Electronics, Inc., 525 U. S. 55, 67. The Federal Circuit had made explicit what was implicit in this Court’s pre-AIA precedent, holding that “secret sales” could invalidate a patent. Special Devices, Inc. v. OEA, Inc., 270 F. 3d 1353, 1357. 855 F. 3d 1356, affirmed.
- Result
- Affirmed
The Court's reasoning
The Court relied on earlier patent decisions saying a sale or offer could count against a patent even if the invention was not made public. It applied that reasoning to the America Invents Act’s “on-sale” rule.
The vote
What's next
The Supreme Court’s review is complete, and the Federal Circuit’s ruling remains in place.
Documents
Docket activity
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AI analysis generated: Case Briefing
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More questions
- Did the Court say every secret sale defeats a patent?
- No. It said a qualifying commercial sale may count as “on sale”; it did not say every confidential deal automatically defeats a patent.
Sources
Primary materials plus reporting. Best-effort analysis: this explainer relies on a mix of primary materials and trusted secondary sources. Official filings and opinions remain authoritative.