Neither of the authors of this blog are patent attorneys but we are generally aware there is a strain of patent law that provides that prior user who is sued for infringement may be able to invalidate a patent by claiming prior invention. In other words, the alleged infringer argues "the asserted patent rights shouldn't have been given to the plaintiff because we were the original inventors of some or all of that patent."
Congress has been playing around with legislation titled the "America Invents Act" which some have termed the most important patent legislation since 1952. Earlier this month the Senate passed this bill overwhelmingly. Gene Quinn, the president and founder of IP Watchdog, Inc., has penned an interesting piece on this legislation that we have linked above. Mr. Quinn's particular focus is on outgoing Secretary of Commerce Gary Locke's comment that follows:
"[W]e believe that innovators who independently create and commercialize technology should not be penalized for, or deprived of, their investment. As a result, we believe that the availability of a prior user defense is, on balance, good policy."
Mr. Quinn, dissenting, argues as follows:
"But what about the innovators who independently create and invest, choosing to grow upon a patent? They couldn’t know about the secret held by the innovators the Obama Administration doesn’t want to penalize because it was precisely kept a secret. Those unsuspecting individuals, businesses, Universities and investors explain the innovation such that those of skill in the art will understand what the innovation is, how to make it, how to use it and what preferences exist, if any. They disclose this information to the public, bringing it out of the shadows of secrecy, invest and build upon this disclosure only to learn that their country appreciates bringing the invention out of the shadows by it cannot be enforced against those who covered up the innovation. That doesn’t sound fair to me, it doesn’t sound like good policy, and it seems that the party truly being penalize is the party that should be rewarded from outing the innovation so society benefits, as is the purpose of a patent system."
Mr. Quinn's ultimate point is synopsized when he suggests: "In fact, if a prior user rights regime is put in place it would tip the balance in favor of patents and disclosure to favoring trade secrets."
We'll keep an eye on this issue for you at Womble Trade Secrets. We admit that we have witnessed more than a few instances of departing employees attempting to patent technologies they learned of and worked with in their employment and it strikes us as trade secret attorneys that we also don't want patent law to incentivize patent claims or generate patent rights in those who weren't the actual inventors.