Are Old Trade Secrets Now Patentable?

The America Invents Act’s first-inventor-to-file system has created a lot of questions in the patent community. One of the most intriguing is how the new prior art rules impact the protection of long-standing trade secrets.

As amended, 35 U.S.C. 102 (a)(1) now states: “A person shall be entitled to a patent unless—(1) 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…”

Questions have centered on the interpretation of the phrase “or otherwise available to the public” and whether it limits the application of secret prior art. Under existing precedent, offers-for-sale and sales in the U.S. did not need to be public in order to invalidate a patent claim.

According to the U.S. Patent and Trademark Office’s (USPTO) interpretation of the new language, “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.”

The IP community appears to agree with the USPTO’s interpretation. The American Bar Association’s IP Law Section considered the issue and concluded:

The passage “otherwise available to the public” reflects the touchstone of what constitutes prior art under the AIA under section 102(a)(1). This section requires availability to the public or public accessibility is an overarching requirement. Such accessibility is critical to provide a simpler, more predictable and fully transparent patent system. As such, for a “public use,” for a determination that an invention is “on sale,” as well as to assess whether an offer for sale has been made, the statutory requirements under the AIA require a public disclosure. Thus, non-public offers for sale (and non-public uses) would not qualify as prior art under the AIA.

The American Intellectual Property Law Association and the Intellectual Property Owners Association adopted a similar position in comments submitted to the USPTO. While these interpretations seems to suggest that old trade secrets would no longer be considered prior art when filing a patent application, this issue will likely need to be resolved by the courts or clarified by Congress in a technical amendment.

Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson.

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