Jeffrey Wendt at the National Association of Patent Practitioners recently pointed out certain trends showing patent practice receding to some extent while trade secret practice is simultaneously expanding.
What is going on, exactly? According to Wendt, this has been occurring for at least three reasons. First, over the years, it has become a lot more difficult to obtain a patent. I would support Wendt's claim by pointing out that we have seen Alice wipe out a large swath of software and business method patents on the grounds of statutory ineligibility, and we have also seen the bright-line teaching, suggestion, or motivation test (TSM) substituted with the much more nebulous and subjective test announced in KSR vs. Teleflex back in 2007.
Second, trade secret protection has been expanding. A new statutory regime called the Defend Trade Secrets Act (DTSA) of 2016 now expands trade secret protection at the federal level.
Finally, according to Wendt, the Leahy-Smith America Invents Act (AIA) expanded the prior-user rights defense in patent infringement cases. The prior user defense is now available if the alleged patent infringer commercially used the subject matter in the United States more than 1 year before the earlier of when the patent was filed and any inventor's grace period under 35 U.S.C. 102(b). Moreover, the prior user defense, instead of being limited to just method patents (as it was traditionally), now also includes machines, manufactures, and compositions of matter used in manufacturing or commercial processes.
What is going on, exactly? According to Wendt, this has been occurring for at least three reasons. First, over the years, it has become a lot more difficult to obtain a patent. I would support Wendt's claim by pointing out that we have seen Alice wipe out a large swath of software and business method patents on the grounds of statutory ineligibility, and we have also seen the bright-line teaching, suggestion, or motivation test (TSM) substituted with the much more nebulous and subjective test announced in KSR vs. Teleflex back in 2007.
Second, trade secret protection has been expanding. A new statutory regime called the Defend Trade Secrets Act (DTSA) of 2016 now expands trade secret protection at the federal level.
Finally, according to Wendt, the Leahy-Smith America Invents Act (AIA) expanded the prior-user rights defense in patent infringement cases. The prior user defense is now available if the alleged patent infringer commercially used the subject matter in the United States more than 1 year before the earlier of when the patent was filed and any inventor's grace period under 35 U.S.C. 102(b). Moreover, the prior user defense, instead of being limited to just method patents (as it was traditionally), now also includes machines, manufactures, and compositions of matter used in manufacturing or commercial processes.
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