America Invents Act: Protecting Innovation Rights

Protecting Innovation Rights

Understanding the America Invents Act (AIA)

In 2011, the passage of the America Invents Act (AIA) by Congress brought about significant changes in patent regulations. While primarily aimed at patent reform, it introduced three key improvements in handling trade secrets.

Protecting Secret Information

The AIA allowed companies to maintain confidential information about an invention without risking the loss of their patent rights for failing to disclose the “best mode” of implementing it.

Extended Rights for Prior Use

The “prior user right,” safeguarding continued use of a secret innovation even after it’s later patented by someone else, was extended to cover all advancements.

Eliminating Patent Denial

The law would no longer invalidate a patent solely because the inventor had previously commercialized the creation without disclosing it to the public.

Ambiguities in Interpretation

However, the last change hinged on interpretation. The requirement that an invention couldn’t be “on sale” or “in public use” over a year before filing a patent application persisted. Congress added a qualifier to 35 U.S.C. §102, indicating no patent if the creation had been “in public use, on sale, or otherwise available to the public.”

Implications and Challenges

Previously, courts were strict about the consequences of choosing trade secret protection over patents. If the inventor used the technology for business purposes, the patent clock began ticking, even if the usage was private and didn’t disclose the innovation itself. However, the AIA seemed to change this, aiming to limit patent forfeiture to situations where the public was informed of the innovation. Developing Secondary Research Skills can significantly aid in understanding the nuances of such legal shifts and their implications within intellectual property rights.

Recent Legal Interpretations

Recent Supreme Court decisions, like Helsinn Healthcare v. Teva Pharmaceuticals, indicated that the law on public use and sale hadn’t changed with the AIA. The court emphasized the significance of an open “sale” that effectively placed the creation beyond the reach of the patent system, even if the details of the invention remained undisclosed.

Present Scenario and Recommendations

Despite advancements favoring trade secret protection, uncertainties persist regarding “secret sales” and “open uses” that aren’t entirely public. To navigate these complexities:

Early Patent Filing

Filing a provisional patent application early remains a recommended strategy, allowing time to evaluate patent vs. trade secret advantages and scope.

Third-Party Engagement

When engaging third parties to refine the product, ensure their involvement is solely for product refinement under robust nondisclosure agreements, avoiding implications of “sale” or “public use.”

Partnerships and Market Entry

Be cautious when involving distributors and partners before product launch, as these interactions might affect patent rights, even without public disclosure.


While the AIA brought significant changes, clarifications are essential to navigate the fine line between trade secrets and patents, ensuring protection during commercialization. Understanding the nuances of Design Rights is crucial in safeguarding intellectual property, especially concerning the aesthetic or visual aspects of innovation. This includes protecting the unique appearance, shape, and ornamentation of products or designs, complementing the patent and trade secret landscape. Comprehensive knowledge of Design Rights ensures holistic protection, bolstering innovation’s commercial viability.

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