Trade Secret Implications of the AIA: Choosing Between Patents and Secrets

Patents and trade secrets coexist as separate intellectual property regimes, and as a result, businesses and inventors must often choose between patent and trade secret protection. Recent legislative changes, including the America Invents Act (“AIA”) directly affect this choice. For example, under the AIA, the prior user defense preserves the right to continue the practice of a trade secret invention in the United States despite subsequent issuance of a third party patent. The availability of this defense limits the need to patent every commercial improvement and simplifies freedom to operate analysis for commercial processes. With these advantages in mind, trade secrets could in some instances be a desirable alternative to patents. Please join our panel as they highlight issues to consider when choosing between patents and trade secrets in light of recent legislative changes and court decisions. Topics will include:

• Subject matter suitable for trade secret and patent protection
• Impact of recent court decisions, including the Supreme Court, on patentable subject matter
• New routes for 35 U.S.C. § 101 patentability challenges under the AIA
• Impact of the AIA on trade secrets including prior user rights
• Coexistence between patents and trade secrets

Moderator:

Martin D. Hyden

Speakers:

Eric P. Raciti
Jennifer H. Roscetti

Date:
Wednesday, December 11, 2013

Time: 

10:00-11:00 a.m. EST
16:00-17:00 CET