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SCOTUS Confirms that Secret Sales Continue to Qualify as Prior Art Under the AIA
On Jan. 22, 2019, the U.S. Supreme Court issued a unanimous opinion, authored by Justice Thomas, in Helsinn Healthcare S.A. v. Teva Pharms. USA, Inc., 586 U.S. __ (2019) (http://bit.ly/2Eixoxq), holding 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 35 U.S.C. §102(a).
In early 2000, Helsinn Healthcare S. A. (Helsinn), a Swiss pharmaceutical company, submitted protocols to the Food and Drug Administration (FDA) for clinical trials of 0.25mg and 0.75 mg doses of palonosetron a drug for treating chemotherapy-induced nausea. Subsequently, Helsinn entered into a license agreement, and a supply and purchase agreement for palonosetron with MGI Pharma, Inc. (MGI).
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