Trade secrets were not substantively altered by the AIA, but they are now provided with some added protection. Although the AIA changed the patent process to a first-to-file regime, the Act includes a somewhat expanded defense for holders of trade secrets accused of patent infringement. If the trade secret holder can prove internal commercial use occurred at least one year prior to the claimed invention’s filing date, the holder will not be held to infringe and may continue use. Admittedly, this is a narrow defense with limitations, for instance the fact that the defense may be asserted only by the entity or person controlling the secret and cannot be transferred.
Considering the limited extent of these changes, the prior use defense likely will not play a large role for most trade secret owners or patent holders. Trade secrets bear some inherent risk and require the owner to take measures to protect the secret, extending to all those entrusted with the information. The best advice for trade secret owners is to be vigilant since rights are only protected if secrets are treated as secrets.
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