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June 20, 2012



As you allude to here and there, PUR's, like trade secrets, can be fragile and almost by definition inscrutable by nearly anyone. Why would the prior user want to tell anyone anything? The hard part is that PUR's subvert the whole concept of the patent right, wherein the quid pro quo at least at the end of the proverbial day contributes to the greater public good. Not so with trade secrets, and folks will have to continue to re-invent that particular wheel ad infinitum.

Trade secrets, and arguably Prior User Rights, are very easy to lose forever if due diligence is not carefully done, and the requirements vary from one country to the next. For one instance, I heard of a trade secret case in Japan, where the *company* lost their rights because one of their *employees* had stuck a Post-It note on the front of his/her moniter with the password to the computer that had details about the trade secret.

The court found them to be remiss in their diligence, so they lost All of their rights forever. At least with a patent, it goes to the greater public good, and is not kept hidden from view as a potential ambush for inventors who are trying to do the right thing, in my opinion. This latter may sound cynical to some, but I am very certain that the issue was discussed at some length by the folks that were investing time and funding to make it happen.

It's bad enough that I am *required* to have my application published at 18 months if I intend to file outside of the US, probably about a year and a half before it is possible for me to get a patent granted. The excuse seemed to be that Universities needed PUR's, but it was most likely included at the behest of large corporations. I figure the latter spent nearly 200 million to get the AIA through Congress.

I am not sure I am understanding the write-up here, but it seems to (incorrectly) indicate that PUR is as fragile ("if not more") than Trade Secrets.

Where is this thought coming from? There is no such requirement for treating the PUR as a trade secret. It may be smart to do so, but there is no such requirement, and no such loss of PUR upon the non-treatment of material as a "trade secret."

What may be causing confusion is the year clearance requirement. I can see the thinking that if someone else files within that year, you might have trouble, and thus you "must" keep it secret for a year. However, this is only "nomimally" true, as the law is actually silent as to "keeping it secret" and (in theory at least) if someone derives from your non-secret and files, you can challenge on derivation basis that the filers did not actually invent.

While potentially burdensome, this is, in fact, NOT a secret requirement along the same lines as Trade Secret. This is a far cry from "perhaps even more so."

The article ends "or should PUR prove to be the better option,... without trade secret-destroying publication or disclosure."

I have posted previously that there are more pernicious aspects not mentioned here.

The fact that PUR arises as a defense means that PUR is, in essence, a submarine attack on a rival's good faith efforts towards patents, and an attack of sorts on the traditional quid pro quo policy. Rising only as a defense means that the "other" party who actually decided to join the patent game and share the knowledge required for a patent, pay for the examination and patent, and foot the bill for enforcement of the patent does NOT have all of the traditional patent rights and benefits, and only finds this out after the patent process has been completed and the patent holder has expended the time, effort and funds to obtain a (now potentially) worthless patent .

Add to this the fact that the Prior User Right holder's sale exhausts the patent rights to the item WITHOUT any benefit to the actual patent holder. In essence, the patent holder recieves no benefit from his disclosure, his competitor who manages to earn PUR has carte blanche and the patent holder is left to enforce his patent against other third parties to clear the field for not just itself but the free-riding PUR holder.

And if the PUR holder can maintain secrecy, then the public gets zero patent-related benefit from the PUR holder (as any patent-related benefit is solely due to the "chump" who actually spent his money to obtain (and enforce) the patent.

As you might guess, I am not a fan of PUR.

Almost universally, those who tend to support independent innovators oppose the prior user rights provision in the patent reform bill. Indeed, it seems to be more or less a giveaway to large corporations.

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