Takeaway: Even secret sales and licenses of a product could count against you under the on-sale bar. Make sure to file a provisional application sooner than later to preserve your rights in an invention if you plan on marketing the product for funding.

In the recent case of Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., the Supreme Court unanimously decided that the language of the AIA did not change the “on-sale” rule in patent law.

The on-sale rule in our patent system states that if an invention is sold more than a year before a patent application was filed, that patent may be invalidated. If the on-sale rule is violated, a person or entity will not be able to obtain patent protection over the invention for which they seek protection.

This case was important because the language of this rule was modified under the AIA back in 2011 to include “or otherwise available to the public.” Attorneys have argued that this language indicates that a “secret” sale would not count as being invalidating because it was not “otherwise available to the public.”

However, the Supreme Court just determined that this added language did no such thing. Any sale or license more than a year before filing an application counts as being on sale and can prevent you from obtaining patent protection.

This is why it is more important than ever to get a provisional application on file so you do not lose rights in your invention. A provisional application is a preliminary application that is not examined, but rather holds your place in line (to prevent others from filing first) and preserves your rights in the invention in the case of public disclosure. With a provisional application, you buy yourself an additional year to develop a prototype or market your invention before you have to file a full non-provisional application.

If you are interested in filing a provisional application today, check out www.patentfiler.com to preserve your rights in your latest invention.