Policy Considerations: The On-Sale Bar for Secret Processes

by Dennis Crouch

In light of the Federal Circuit’s recent decision in Celanese v. ITC, it’s worth examining the policy implications of maintaining a strong on-sale bar that extends even to invalidate patents on secret processes when the resulting products have been commercialized. This rule is rooted in pre-AIA jurisprudence and is now affirmed under the AIA.

1. Early Public Disclosure vs. Trade Secret Retention

One of the primary arguments in favor of a strong on-sale bar is its potential to encourage early disclosure of inventions. The theory is that by forcing inventors to choose between patent protection and trade secret protection early on, we promote the progress of science and useful arts by making knowledge publicly available sooner.

However, this assumption may not always hold true. In some cases, particularly where the process is difficult to reverse engineer from the product, this rule might instead incentivize inventors to maintain their processes as trade secrets indefinitely. This could result in a net reduction of public knowledge, contrary to the patent system’s goals.

The actual impact likely varies by industry and technology type. For instance, in fields where rapid innovation is crucial and patent protection is highly valued, the on-sale bar might indeed spur earlier disclosures.

Continue reading Policy Considerations: The On-Sale Bar for Secret Processes at Patently-O.