Imagine that for years, you have been using a secret process to create the best widgets in the world. No other widgets compare to yours in quality or durability. But recently you have been losing sleep. Information breaches and leaks have become commonplace, and you are wondering how long you can keep your secret process secret. Should you think about patenting that process? Unfortunately, it may be too late, but don't worry, there is a silver lining.
Patent law has long included an "On-Sale Bar" that prevents an inventor from patenting an invention that was on sale for more than one year before the patent application was filed.1 In August 2024, the Federal Circuit Court issued an opinion in Celanese International Corporation v. International Trade Commission2, reiterating that selling a product that was made according to a secret method triggers the On-Sale Bar. The Court noted that this has been the case since at least 1829 when it was first addressed by the Supreme Court.3 However, the newly enacted America Invents Act of 2011 gave an overhaul to patent law in the United States and the question arose whether the On-Sale Bar still applies to secret processes. The Federal Circuit held that it does.
What that means is that if you have been using a secret process to create a product that you have been selling for more than a year, you cannot obtain a patent on that secret process. So, what is the good news? The good news is that you are not the only person prevented from obtaining a patent on your secret process – no one can – so no one can prevent you from using your own process. Further, by developing strong trade secret practices, including employee non-disclosure agreements; company access and usage policies; and industry standard protective measures, you can help ensure that your secret process is well protected.
Regardless of whether you use a secret process in your business or not, at Parsons Behle & Latimer we can walk you through patent issues, trademark issues, copyright issues, and we can help you bolster your trade secret protective measures. Let us know how we can serve you to ensure that your intellectual property is secure.
Footnotes
1. See 35 U.S.C. § 102(a)(1); See also 35 U.S.C. § 102(b) (1952).
2. 111 F.4th 1338 (2024).
3. Celanese, 111 F.4th, at 1343 (referring to Pennock v. Dialogue, 27 U.S. 1).
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