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    Locke Lord QuickStudy: Pre-Patenting Manufacturing and Distribution Agreements – The Public (or Secret) Weapon Against Your Company’s Own Intellectual Property

    Locke Lord Publications

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    I previously wrote on the issue of engaging manufacturers and distributors to sell or make novel products and/or use novel methods before filing a patent application (see the attached links to my prior articles).  

    In those prior articles, I discussed how it remained to be seen whether the confidential nature of such agreements might prevent them from acting as a bar to obtaining patents to such novel products and methods under the Leahy-Smith America Invents Act (“AIA”).  To the extent you may have thought a confidential agreement cannot be a source of invalidating offers for sale, the Supreme Court’s recent decision in Helsinn Healthcare S.A. v. Teva Pharms. USA, Inc., No. 17-1229, 586 U.S. __, 2019 WL 271945 (Jan 22, 2019) should make you think again.  It is now the law that the confidential nature of a commercial agreement does not prevent it from serving as a source of an offer for sale that could potentially deny you or your company a patent.

    Conclusions And Recommendations

    In addition to my previous conclusions and recommendations, e.g., file your or your company’s patent application well before negotiating or entering into a manufacturing and/or distribution agreement, you should take heed of the Supreme Court’s Helsinn decision holding that confidential agreements are just as capable of invalidating future patents as any other under the AIA. 

    In view of the foregoing, if you or your company wish to engage in any distribution, supply, or manufacturing agreements related to innovative products or methods, keep a patent attorney in mind to help you ensure compliance with the current state of the law.  He or she can help you make sure that such agreements do not become the very weapon that will destroy your or your company’s ability to protect the innovations at the center of those agreements.

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