The Riddle of Secret Public Use: A Response to Professor Lemley

Abstract

Professor Mark Lemley’s recent article, Does “Public Use” Mean the Same Thing It Did Last Year?, argues that the rule barring an inventor’s right to a patent when that inventor practiced the invention in secret but exploited it commercially for more than one year before filing a patent application survived the America Invents Act (AIA). The article also contends that the rule is correct for policy reasons. This essay agrees with Lemley's statutory interpretation but argues that the rule is inconsistent with Supreme Court precedent and should be abrogated based on common-law principles. This essay also argues that the rule creates significant costs and is inconsistent with the AIA's goal to harmonize the U.S. patent law with those of other countries.

Keywords: prior art, trade secret, Metallizing, America Invents Act, commercialization, forfeiture, disclosure, public use, on sale