May 1, 2017.

The US Supreme Court, by unanimous decision of 22 January 2019 (whose full text can be downloaded here), has now confirmed the CAFC judgment, reiterating that a “secret sale” can invalidate a patent.

This decision, although relating to the pharmaceutical field, is of general interest because it warns about the risks deriving from the sale or the advertising of commercial agreements whose object or content, although confidential, can in any case be effectively produced in court in the USA to invalidate a subsequent patent covering technical elements of the product sold or described in the agreement.

In light of this final decision, we recommend our clients with potential patent interests in the USA:

to check whether the object of a possible sale or the content of a possible commercial agreement, if made public, could prejudice the validity of a subsequent patent for lack of novelty and/or inventive activity;
and if so, to evaluate filing a patent application before selling the product or signing the agreement.
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