IP Attorneys Author IP Litigator Article on U.S. Supreme Court Decision on “On Sale” Bar in Drug Patent Case

IP Litigator published an article by Ropes & Gray IP attorneys on the recent U.S. Supreme Court’s decision in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA Inc. The article was co-authored by IP transactions partners Regina Sam Penti and Melissa Rones (both of Boston), IP litigation partner Matt Rizzolo (Washington, D.C.), and IP transactions associate Christopher Han (New York).

The ruling affirmed that Helsinn’s patents covering anti-nausea medicine Aloxi were invalid because Helsinn had made a confidential sale of a product containing the Aloxi drug formulation two years prior to seeking the patents, even though the specific formulation remained undisclosed to the general public.

The authors explain that the Supreme Court’s decision in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA Inc. clarifies an ambiguity in the America Invents Act (AIA), conflicts with the current U.S. Patent & Trademark Office practice regarding so-called “secret sales,” and may lead to future disputes and litigation regarding “on-sale bar” issues for post-AIA patents issued under the current Patent Office practices.