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

Details

Author(s):
  • Dmitry Karshtedt
Publish Date:
July 13, 2014
Publication Title:
Texas Law Review
Format:
Journal Article Volume 93 Page(s) 159
Citation(s):
  • Dmitry Karshtedt, The Riddle of Secret Public Use: A Response to Professor Lemley, 93 Texas Law Review 159 (2014).
Related Organization(s):

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.