The Leahy-Smith America Invents Act (“AIA”) is the largest revision to the patent statute in over sixty years. One might ask whether the AIA changed the balance between trade secret law and patent law and what the new relationship will be between these different approaches to protecting technology. This article answers four particular questions that arise in addressing this topic. First, what, if anything, the AIA says specifically about trade secrets; second, whether someone who commercially uses a trade secret for over one year can patent it under the AIA; third, whether a new inventor may patent an invention that was secretly used by a third party as a trade secret; and fourth, assuming that a later-conceived invention is patentable to a new inventor, whether such a patent is enforceable against the prior trade secret user in light of the prior user defense as revised by the AIA.
Edward D. Manzo, The Impact of The America Invents Act on Trade Secrets, 13 J. Marshall Rev. Intell. Prop. L. 497 (2014)