Secret Sales Are Still Prior Art: U.S. Supreme Court Affirms Helsinn Healthcare

The Supreme Court unanimously finds that the AIA's "on sale" statutory language did not alter the pre-AIA "on-sale" bar.

On January 22, 2019, the U.S. Supreme Court held that the America Invents Act ("AIA") did not change the on-sale bar in pre-AIA §102(b). Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 586 U.S. __ (2019). Applying pre-AIA precedent, the Supreme Court expressly confirmed for the first time that secret sales or offers of sale—those not disclosed to the public—can constitute prior art.

The alleged "secret sale" at issue involved medications developed by Helsinn to combat the negative effects of chemotherapy. In 2001, Helsinn entered into an agreement with a partner to market and distribute the medications. Helsinn and its partner publicized the existence of their agreement but did not publicly disclose the underlying chemical formulations of its medications until filing a patent application several years later.

In reaching its decision, the Court noted that although it had never directly addressed the question, the Federal Circuit's pre-AIA precedent has long held that "secret sales" can invalidate a patent. Id. at *7. The Court then compared the pre-AIA statutory language to the text of the AIA to determine whether Congress intended to alter the meaning of "on sale" and noted that the only relevant change in the AIA was the addition of the catchall phrase "or otherwise available to the public." Id. In light of the settled pre-AIA precedent on the meaning of "on sale," the Court "presume[s] that when Congress reenacted the same language in the AIA, it adopted the earlier judicial construction of that phrase." Id. The addition of the catchall phrase "is simply not enough of a change for us to conclude that Congress intended to alter the meaning of the reenacted term 'on sale.'" Id. at *8.

Accordingly, in a rare affirmance of the Federal Circuit, the Court held that the AIA's on-sale bar, like the related pre-AIA provision, applies to secret sales and offers for sale. Secret sales and offers for sale may therefore constitute invalidating prior art when the sale or offer is a "commercial offer" of a product embodying the invention, and the invention is "ready for patenting." See Pfaff v. Wells Electronics, Inc., 525 U.S. 55 (1998).

Lawyer Contacts

For further information, please contact your principal Firm representative or one of the lawyers listed below. General email messages may be sent using our "Contact Us" form, which can be found at

David M. Maiorana

Gregory A. Castanias

Jennifer J. Chheda
New York

Sasha Mayergoyz

David E. Anderson, an associate in the Cleveland Office, assisted in the preparation of this Alert.

Jones Day publications should not be construed as legal advice on any specific facts or circumstances. The contents are intended for general information purposes only and may not be quoted or referred to in any other publication or proceeding without the prior written consent of the Firm, to be given or withheld at our discretion. To request reprint permission for any of our publications, please use our "Contact Us" form, which can be found on our web site at The mailing of this publication is not intended to create, and receipt of it does not constitute, an attorney-client relationship. The views set forth herein are the personal views of the authors and do not necessarily reflect those of the Firm.