Page 7 - 2020 Policy Watch-Comparison of Secret Sale Patent
P. 7
The American Chamber of Commerce in South China
PHhealsrimnns. HUeSaAlt,hIcnacr.e S.A. v. Teva HTeevlsainPnhaHremaslt.hUcSaAre, ISn.Ac..æ¡??
The United States Court of Appeals for the Federal ç¾?????å·¡å?ä¸??æ³??认å?ï¼????35 U.S.C.S. §
Circuit properly found that a Swiss pharmaceutical 102(a)(1) ä¸??äº????????´â???è§??ï¼??æ??
company was prohibited by the ??n sale?? bar in 35 家ç?å£??????¸ç?ä¸?ç§??äº?²»??????å¼?µ·???
U.S.C.S. § 102(a)(1) from obtaining a U.S. patent on å¿?????????©ç?请ç??½ä??©ï??????????ä¸?
a drug that treated chemotherapy-induced nausea and ä¸?家ç??½æ?å°¼è?è¾¾å??¶è????ç¾è?äº??份è????
vomiting because it had entered into a license agree- è®??ä¸?份ä?åº?´ä¹°å?è®???¨ç?请ç??½ä??©å?å·²å?
ment and a supply and purchase agreement with a ç¾??????????è¶??ä¸?å¹´ã????¶è???£«???ä¸??
Minnesota pharmaceutical company to sell the drug in å°¼è?è¾¾å????并æ???????ä¸?????????????
the United States more than a year before it applied for ???ä½??ä»??å¼?äº??述两份å????并è?为ï??¹æ?
a U.S. patent. Although the Swiss company and the § 102(a)(1)对ä?????³è?ä¸?????å®??å®??è¿??
Minnesota company did not disclose the dosage of the è¡?¸º???ä¸????????????????
active ingredient that was in the drug, they disclosed
the existence of both agreements, and that disclosure ???å¸??å¯??ç¾?????æ³??(??IA??)???æ?»»
qualified as ??rior art?? under § 102(a)(1) for purposes ä½?ºº?¨å?主å???????????³è??¥æ???·²è¢??ä¼?
of determining the patentability of the drug. 使ç?????????????¶ä?å·²å????????????
The Leahy-Smith American Invents Act (??IA??) pre- ?·æ?ä¸???????????ç??为æ???????æ¡??
cludes a person from obtaining a patent on an inven- å¼?并å?æ¤é???ä¸???³è?缺ä??°é??§ï?35 U. S. C.
tion that was in public use, on sale, or otherwise avail- §102(a)(1)�1??
able to the public before the effective filing date of the
claimed invention. The reason is that these actions con-
stitute disclosure of technical solution and thus cause
the patent application to have a lack of novelty (35 U.
S. C. §102(a)(1))1 .
1 35 U.S.C.S. § 102 Conditions for patentability; novelty 1 35 U.S.C.S. § 102ä¸???§æ?件ï??°é???
(a)Novelty; Prior Art.?? person shall be entitled to a patent unless ï¼?ï¼??é¢??§ï??°æ?????????»»ä½?ºº???å¾???©ï??¤é?ï¼?1ï¼?
(1) the claimed invention was patented, described in a printed è¢?¸»å¼?????????³è??¥å?å·²ç??·å?ä¸????????°å??ºç?
publication, or in public use, on sale, or otherwise available to the ?©ä¸è¢??è¿°è??????å·²è????使ç?????????????¶ä?å·?
public before the effective filing date of the claimed invention; or ???ä¼??å¼?ï¼??ï¼?2ï¼??主å????å·²è?è½½ä??¹æ?ç¬?151???äº?
(1) the claimed invention was patented, described in a printed ????©ï??????ection 122(b)å·²å?表ç????认为已å?表ç?ä¸?
publication, or in public use, on sale, or otherwise available to the ?©ç?请书ï¼??ä¸?????请å??????????ä¸???¨è?主å???
public before the effective filing date of the claimed invention; or ???????³è??¥å?å·²æ????交ç?请ã??
(2)the claimed invention was described in a patent issued under
section 151, or in an application for patent published or deemed 7
published under section 122(b), in which the patent or application,
as the case may be, names another inventor and was effectively filed
before the effective filing date of the claimed invention.
PHhealsrimnns. HUeSaAlt,hIcnacr.e S.A. v. Teva HTeevlsainPnhaHremaslt.hUcSaAre, ISn.Ac..æ¡??
The United States Court of Appeals for the Federal ç¾?????å·¡å?ä¸??æ³??认å?ï¼????35 U.S.C.S. §
Circuit properly found that a Swiss pharmaceutical 102(a)(1) ä¸??äº????????´â???è§??ï¼??æ??
company was prohibited by the ??n sale?? bar in 35 家ç?å£??????¸ç?ä¸?ç§??äº?²»??????å¼?µ·???
U.S.C.S. § 102(a)(1) from obtaining a U.S. patent on å¿?????????©ç?请ç??½ä??©ï??????????ä¸?
a drug that treated chemotherapy-induced nausea and ä¸?家ç??½æ?å°¼è?è¾¾å??¶è????ç¾è?äº??份è????
vomiting because it had entered into a license agree- è®??ä¸?份ä?åº?´ä¹°å?è®???¨ç?请ç??½ä??©å?å·²å?
ment and a supply and purchase agreement with a ç¾??????????è¶??ä¸?å¹´ã????¶è???£«???ä¸??
Minnesota pharmaceutical company to sell the drug in å°¼è?è¾¾å????并æ???????ä¸?????????????
the United States more than a year before it applied for ???ä½??ä»??å¼?äº??述两份å????并è?为ï??¹æ?
a U.S. patent. Although the Swiss company and the § 102(a)(1)对ä?????³è?ä¸?????å®??å®??è¿??
Minnesota company did not disclose the dosage of the è¡?¸º???ä¸????????????????
active ingredient that was in the drug, they disclosed
the existence of both agreements, and that disclosure ???å¸??å¯??ç¾?????æ³??(??IA??)???æ?»»
qualified as ??rior art?? under § 102(a)(1) for purposes ä½?ºº?¨å?主å???????????³è??¥æ???·²è¢??ä¼?
of determining the patentability of the drug. 使ç?????????????¶ä?å·²å????????????
The Leahy-Smith American Invents Act (??IA??) pre- ?·æ?ä¸???????????ç??为æ???????æ¡??
cludes a person from obtaining a patent on an inven- å¼?并å?æ¤é???ä¸???³è?缺ä??°é??§ï?35 U. S. C.
tion that was in public use, on sale, or otherwise avail- §102(a)(1)�1??
able to the public before the effective filing date of the
claimed invention. The reason is that these actions con-
stitute disclosure of technical solution and thus cause
the patent application to have a lack of novelty (35 U.
S. C. §102(a)(1))1 .
1 35 U.S.C.S. § 102 Conditions for patentability; novelty 1 35 U.S.C.S. § 102ä¸???§æ?件ï??°é???
(a)Novelty; Prior Art.?? person shall be entitled to a patent unless ï¼?ï¼??é¢??§ï??°æ?????????»»ä½?ºº???å¾???©ï??¤é?ï¼?1ï¼?
(1) the claimed invention was patented, described in a printed è¢?¸»å¼?????????³è??¥å?å·²ç??·å?ä¸????????°å??ºç?
publication, or in public use, on sale, or otherwise available to the ?©ä¸è¢??è¿°è??????å·²è????使ç?????????????¶ä?å·?
public before the effective filing date of the claimed invention; or ???ä¼??å¼?ï¼??ï¼?2ï¼??主å????å·²è?è½½ä??¹æ?ç¬?151???äº?
(1) the claimed invention was patented, described in a printed ????©ï??????ection 122(b)å·²å?表ç????认为已å?表ç?ä¸?
publication, or in public use, on sale, or otherwise available to the ?©ç?请书ï¼??ä¸?????请å??????????ä¸???¨è?主å???
public before the effective filing date of the claimed invention; or ???????³è??¥å?å·²æ????交ç?请ã??
(2)the claimed invention was described in a patent issued under
section 151, or in an application for patent published or deemed 7
published under section 122(b), in which the patent or application,
as the case may be, names another inventor and was effectively filed
before the effective filing date of the claimed invention.
