The 2011 America Invents Act (AIA) changed the US patent system from a "first to invent" system to a "first inventor to file" system for prior art assessment purposes. Under the pre-AIA law, the commercialization of a secret process (such as a trade secret process for making an agrochemical composition) foreclosed the possibility of obtaining a patent for that process after one year had passed from the initial offer for sale. As a result, companies were faced with the decision of either filing a patent application on inventive processes or keeping them as trade secrets. Originally, most commentators and the US Patent & Trademark Office interpreted the AIA as eliminating this “secret” prior art, opening the door to filing patent applications on long-held trade secrets. Recent developments in the case law, however, in particular the Federal Circuit's <i>Helsinn v. Teva </i>decision, have created great uncertainty on this issue. The presentation discusses the old “secret” prior art standard, the various views of how the AIA should be interpreted, and recent case law developments. It concludes with practical recommendations on how best to protect trade secret processes in view of the uncertain status of the law.

Patenting the unpatentable? Opportunities for protecting trade secret processes under the America Invents Act

256th National Meeting (2018)

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