How does AIA 35 U.S.C. 102(a)(1) treat secret commercial use or sale?
Under AIA 35 U.S.C. 102(a)(1), secret commercial use or sale can still qualify as prior art, similar to pre-AIA law. The Supreme Court clarified this in the Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc. case.
As stated in the MPEP:
“In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 139 S.Ct. 628, 129 USPQ2d at 1193 (2019), the Supreme Court ‘determine[d] that Congress did not alter the meaning of ‘on sale’ when it enacted the AIA, [and held] that an inventor’s sale of an invention to a third party who is obligated to keep the invention confidential can qualify as prior art under [AIA 35 U.S.C.] § 102(a).'”
This means that:
- A sale or offer for sale that does not publicly disclose the invention can still be prior art
- Confidential sales or commercial uses can potentially bar patentability
- The interpretation is consistent for both AIA and pre-AIA applications
Inventors and businesses should be aware that secret commercial activities could impact patent rights, even if the invention itself is not publicly disclosed.
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