Patentability of Commercial Use of a Trade Secret

Catherine L. Kung and Lawrence S. Pope

©2015. Published in Landslide, Vol. 7, No. 5, May/June 2015, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

The Leahy-Smith America Invents Act (AIA) is the single most significant U.S. patent law reform effort since 1952. Key among its provisions was a basic philosophical change in the right to obtain a patent. The right to a patent on a given invention now goes to the first inventor to file (FITF) as opposed to the first inventor to make the invention (FTI). This change, which became effective for patent applications filed on or after March 16, 2013, has profound effects not only on priority between rival inventors but also on the nature of the prior art applicable to a given patent application. The drafters of the law sought to make the law clearer by limiting prior art (or patent validity defeating events) to publicly ascertainable events. Among other things, it eliminated prior invention in the United States as a prior art event. Less clear was how the law was to deal with commercial activity that was shielded from public view.1

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