All 9 Justices Agree that Secret Sales are Still Prior Art

January 22, 2019

Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA Inc.

Of course it’s a patent law case that gets all nine justices to agree. In a 9-0 decision, the Supreme Court of the United States affirmed the Federal Circuit in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA Inc.

The SCOTUS kept the law as-is regarging “secret sales.”

  • AIA didn’t alter the meaning of “on sale”
  • The sale of an invention to a third party who is obligated to keep the invention confidential may place the invention “on sale” for purposes of the [on sale bar].

Take home message:

A Confidentiality or Non-Disclosure Agreement (CDA/NDA) during a sale of your product won’t protect the sale from possibly being used against you as prior art.

 

If you get a restriction requirement, then use it to file divisionals.

January 29, 2018

Worried about Obviousness-type Double Patenting?: If you get a restriction requirement, then use it to file divisionals. 

Since the “Gilead case,” many of us worry about terminal disclaimers for Obviousness-type Double Patenting erasing any Patent Term Adjustment.  With Divisional applications that worry should be abated since 35 U.S.C 121 has been interpreted to prohibit claims in a divisional application (filed following a restriction requirement) from being cancelled or rejected based upon the parent application.

IMPORTANT: For you to use the safety net of 35 U.S.C 121, you need to file a divisional application.

  • File New Application, in view of the restrition requirement, as a Divisoinal
  • You cannot simply file a new continuation or continuation-in-part and then take advantage of 35 U.S.C 121.
  • You cannot go back and fix your continuation by trying to convert it to a divisional.
    • J&J / NYU tried this with their Remicade patents and it didn’t work.

Remicade case:

Take home message: The “CIPs” in the graphic below should have been “Divisionals.”

471-patent-graphic

Patently-O Post:

https://patentlyo.com/patent/2018/01/patent-blockbuster-remicade.html

Rothwell, Figg Post:

http://www.ptablaw.com/2018/01/30/strict-limits-3-u-s-c-§-121s-safe-harbor-provision-intersection-two-blogs/

 

Pemetrexed (ALIMTA®) Patent Survives an IPR Obviousness Challenge

December 12, 2017

Eli Lilly’s patent (US Patent No. 7,772,209 claiming methods for administering pemetrexed) survived an IPR Challenge on obviousness (IPR2016-00237).

Recall back in January, the patent made headlines when Eli Lilly won in court with an opinion that Teva was liable for induced infringement of the patent’s methods of administering pemetrexed.

Teva Liable for Induced Infringement of Eli Lilly’s Methods of Administering Pemetrexed (ALIMTA®)