Trade secrecy and patent rights traditionally have been considered mutually exclusive. Trade secret rights are premised on secrecy. Without it, they evaporate. Patent rights, on the other hand, require public disclosure. Absent a sufficiently detailed description of the invention, patents are invalid.
However, with the passage of the Leahy-Smith America Invents Act (“AIA”) last fall, this once black-and-white distinction may melt into something a little more gray. Buried amidst myriad tweaks to the Patent Act is one that has the potential to substantially change the boundary between patent and trade secret protection. For the first time since at least 1952 (and as a practical matter since 1870), an inventor’s failure to disclose in her patent the preferred method for carrying out the invention—the so-called “best mode”—will no longer invalidate her patent rights or otherwise render them unenforceable.
In this brief Essay, we explain why it may become routine post-patent reform for patentees to attempt to assert both patent rights and trade secret rights for preferred embodiments of their invention in certain types of cases. We also consider potentially undesirable ramifications of this change and suggest one approach that courts may use to limit claims of concurrent trade secret and patent protection when equity demands.