Recent Changes in U.S. Patent Law May Make Patenting Long-Held Trade Secrets Easier

The Leahy-Smith America Invents Act (AIA) which went into effect in March contains a little-discussed provision that could greatly strengthen the value and patentability of long-held trade secrets.

In published notes on the new law, the U.S. Patent and Trademark Office has indicated that it will no longer consider secret sales and secret use of an invention as disclosed prior art. This change will enable companies and inventors to commercially exploit inventions without disclosing them in a patent and then patent them when it is economically preferable.

Many inventors prefer to use trade secrets rather than patents to protect their ideas and inventions because doing so does not require them to disclose anything about the new development to protect it from competitive use. Previous Patent law and procedures often led to the rejection of attempted patents for trade secrets because their previous implementation and sale rendered them ineligible under the “prior art” exception.

Here is the relevant language, taken from Federal Register Vol 78, No. 31, p. 11062 which contains public comments and USPTO responses from the legislation’s consideraiton process.

“A patent is precluded under AIA 35 U.S.C. 102(a)(1) if ‘‘the claimed invention was  patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.’’ AIA 35 U.S.C. 102(a)(1) contains the additional residual clause ‘‘or otherwise available to the public.’’

Residual clauses such as ‘‘or otherwise’’ or ‘‘or other’’ are generally viewed as modifying the preceding phrase or phrases.

“Therefore, the Office views the ‘‘or otherwise available to the public’’ residual clause of the AIA’s 35 U.S.C. 102(a)(1) as indicating that secret sale or use activity does not qualify as prior art.”