Griffith B. Price, Jr. and Jia Lu, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Changes to the availability and scope of patent protection under the American Invents Act may affect the choice between using patents or trade secrets, or a combination of the two, to protect various aspects of a technology or invention. Among other things, changes in the definition of prior art, expansion of the prior commercial user defense, and elimination of the “best mode” requirement as a basis for invalidity may tip the balance in favor of trade secrets in some cases. The presenters will discuss the overall effect of the AIA on the relationship between patent and trade secret protection, including more options in planning for the protection of new inventions and technologies, expanded ability to tailor IP protection to specific processes and inventions depending on their anticipated use and lifespan, and greater opportunities for coexistence between patents and trade secrets relating to a given technology or invention.