I am having a little difficulty with this concept. At this
point the item has been in commercial use for over a year and is no
longer patentable. How could they defend their patent?
Hang onto your hat and engage your brain---turn the artistic side
off if you can so it doesn't interfere:-).
"If they have been using the trade secret commercially for over a
year, the trade secret is a statutory bar to them, but not to third
Statement above made by a patent attorney and not contradicted but
apparently supported on misc.int-property where this topic is
Next, the relevant sections of the law:
"35 U.S.C.102 Conditions for patentability;nov-=AD elty and loss of
right to patent. A person shall be entitled to a patent unless =97
(a)the invention was known or used by others in this country,or
patented or described in a printed publication in this or a foreign
country,before the invention thereof by the applicant for patent,or
(b)the invention was patented or described in a printed publication
in this or a foreign country or in public use or on sale in this
country,more than one year prior to the date of the application for
patent in the United States,or ... (g)...(2)before such person =92s
invention thereof, the invention was made in this country by another
inventor who had not abandoned,suppressed,or con- =AD cealed it."
Now the (court's) logic (as I understand it):
While 102(a) above clearly says "used by others in this country
[US]" the courts have held that that is not as sweeping as it sounds
in that 1) it pretty much MUST mean that the knowledge was also
available to the inventor now applying for a patent and that 2)
(g)(2)'s "made in this country by another... who had
***not***...concealed it" must NOT be applicable. (As you can see,
when those acts/knowledge occur in non-US countries the permutations
and interpretations are completely different.) Next, just what does
"commercial use" mean? The courts treat it as a subset of 102(b)
above's "public use" and thus the one year bar gets attached---but
only to that trade secret user/inventor, again because that secret
knowledge was not available to the new inventor. The judicial
decisions are based in part on simple "fairness" and "promoting
progress." Would it be fair for an inventor to keep their invention
a trade secret and use it commercially for 10 years all the while
keeping an eye out for another inventor to invent and patent the
same invention then, by invoking an interference and demonstrating
"first to invent," that they should now have the patent in addition
to their trade secret---and that the patent be good for 20 years from
their filing thus giving them 30 years of monopoly?
An early discussion case of this is at
alliz.h tm but be forewarned that much of the precedent of that case
is NO LONGER VALID law, being superceded by law and case revisions.
Just because the patent was granted doesn't mean that it is
True, and the USPTO estimates about 10% of all issued patents are
invalid for one reason or another, i.e., about 17,000 last year
Otherwise, millions of former employees would be lining up at
the PTO with their former employers trade secrets.
Quite false for at least 2 reasons: 1) only the true inventor in the
US is allowed to apply for and receive a valid patent and 2) such
applicants would easily be found totally liable for breach of their
secrecy agreements (written or not but written is MUCH better). (In
foreign countries where one would be interested in applying it need
not be the inventor that applies for and gets a patent but it MUST
be someone, such as the inventor's employer, who has a legitimate,
current, ownership interest in the invention.)
When you've recovered sufficiently turn your artistic brain side back
on and get back to work!:-).
James E. White
Inventor, Marketer, and Author of "Will It Sell?
How to Determine If Your Invention Is Profitably Marketable
(Before Wasting Money on a Patent)" www.willitsell.com