Original air date: 10.14.20.
This course has expired and is no longer eligible for CLE.

It has been almost two years since the Supreme Court decision in Helsinn on whether private sales by an inventor more than one-year before the first filing date remain prior art after the AIA. District courts have started to grapple with the impact of Helsinn on related question about on-sale prior art and are coming up with different answers for different fact patterns: What if the sale is by the inventor, but less than one year before the effective filing date? What if the sale is a private sale of a prototype to the inventor, not by the inventor? What if the sale is a private sale by a third party before the effective filing date, and what if that third party is later a defendant in an infringement suit? If the private sale is only an offer for sale, who makes the invention “ready for patenting” in order to qualify as being on sale? And, what if any of these fact patterns need to be submitted to the USPTO to satisfy your duty of candor, and, if you do need to submit something, how do you accomplish that submission and still protect the confidentiality of your client’s private communications. Learn from the authors of the Prior Art After the AIA Guidebook how to spot these kinds of on sale issues, and how to do your best to avoid having one backfire on you or your clients.

Presented by: Brad Pederson of Patterson Thuente Pederson, P.A. and Gregory Allen of The Law Offices Of Gregory Allen, PC