In its 2018 decision in Helsinn Healthcare SA v Teva Pharmaceuticals USA, Inc., the Supreme Court ruled that the sale of an invention by an inventor to a third party who is obligated to keep the invention confidential may create a prohibition on sale under AIA §102(a). Resting on HelsinnALJ Cheney of ITC held, in About Some Powerful Sweeteners (Inv. No. 337-TA-1264) — at first glance — that the sale by a patentee of an unpatented product made by a secret process may create an obstacle to the patentability of the process.

About Some Powerful Sweeteners was brought by Celanese International Corporation (“Celanese”) against more than 20 respondents, including Anhui Jinhe Industrial Co., Ltd. and Jinhe USA LLC (collectively “Jinhe”). The patents claimed in the investigation claim improvements to a conventional process for making acesulfame potassium (Ace-K) – an artificial sweetener used in foods, beverages and drugs. During the prosecution of the claimed patents, Celanese admitted that the claimed process had been used, in secret, in Europe and that products made from the claimed process were sold in the United States more than a year before the date of priority. Citing Celanese’s admission, Jinhe filed a motion for a summary determination of non-infringement based on the assertion that all patent claims asserted in the investigation were invalid because Celanese sold products made with the patented process. more than a year before the effective patent filing date, thus creating a bar for sale under 35 USC § 102(a)(1). On January 11, 2022, ALJ Cheney issued an initial decision granting Jinhe’s motion.

The question at the heart of ALJ Cheney’s decision was whether the Leahy-Smith America Invents Act (AIA) amendments to the sales ban in 35 USC §102 changed pre-AIA law regarding the sale of products manufactured by a secret process. Under pre-AIA law, the sale by a patent holder of an unpatented product made by a secret process may create an obstacle to the patentability of the process. It was undisputed that if the claimed patents were pre-AIA patents, Celanese’s prior sales of Ace-K made with its secret process would have created an obstacle to the patentability of the process. But the claimed patents have a priority date after the AIA’s effective date, so the AIA’s version of the §102 listing ban applies. There has been no ruling on this aspect of the ATIA prohibition on sale, thus creating a case of first impression.

The pre-AIA version of the §102 sales prohibition stated that a person was entitled to a patent unless “(b) the invention was patented or described in a printed publication in this country or in a foreign country or in public use or on sale in that country, more than one year before the date of the U.S. patent application 35 USC § 102(b) (pre-AIA).The AIA version of the prohibition of sale §102 states that a person is entitled to a patent unless “(1) the claims the invention has been patented, described in a print or public use publication, for sale, or otherwise publicly available before the effective filing date of the claimed invention. 35 USC § 102(a)(1) (AIA) (emphasis added).

In Helsinn, the Supreme Court considered whether, under the AIA, the sale of an invention by an inventor to a third party who is required to keep the invention confidential constitutes prior art for purposes of the prohibition of sale. The court in Helsinn concluded that Congress intended to adopt the prior judicial interpretation of “for sale” and held that the sale of an invention by an inventor to a third party who is obligated to keep the invention confidential may create a prohibited from sale under AIA §102(a).

In the current case, Celanese, citing textual changes to the AIA version of Section 102, argued that Helsinn relates only to what it means to be “on sale” and does not address other aspects of the bar being on sale. Celanese noted that unlike Helsinn, where the patent claims were directed to a “product” that was the subject of the secret sale, the claims in this case were directed to a secret “process” and Celanese sold products made from that process. Celanese argued that when Congress amended the statute to add the word “claimed” as a modifier to “invention” and add the phrase “or otherwise publicly available,” Congress intended to amend the existing statute. and to allow patent protection of a secret process, even if the patentee sold products made with that process before filing the patent application.

ALJ Cheney rejected Celanese’s arguments, noting that the AIA’s addition of the word “claimed” to modify “invention”, without further explanation, would not be an appropriate way to overturn an existing body of law. Further, citing the AIA’s legislative history, ALJ Cheney argued that the Supreme Court’s decision Helsinn The opinion, while not addressing this exact fact pattern, supported a conclusion that Congressional enactment of the AIA did not overturn other long-established precedents regarding prohibition. of sale, including whether the sale by a patent holder of an unpatented product produced by a secret process may create an obstacle to the patentability of the process.

To take with

Manufacturing and chemical companies often have to decide whether an invention related to a manufacturing or chemical process should be kept as a trade secret or filed for patent. Each type of intellectual property protection has different advantages and disadvantages. Pre-AIA law prevented companies from trying to take advantage of the benefits of both types of protection – keeping an invention as a trade secret for as long as possible, then filing for patent protection to extend the term. protectable life of the invention. Here, Celanese argued that the changes to the AIA prohibition on sale nullified that law and allowed him to enjoy both types of protection for the same invention, but ALJ Cheney rejected this argument, finding that pre-AIA law still applied. . Although this decision has not been upheld by the Commission, and will most likely be subject to an appeal, it confirms the pre-AIA law, which obliges companies to choose between trade secrecy and patent protection for their inventions.

© Copyright 2022 Squire Patton Boggs (USA) LLPNational Law Review, Volume XII, Number 41

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