In re Bilski

THE PATENT BARGAIN AND THE CURSE OF RETROACTIVITY

Patents for inventions are issued by the federal government upon review and approval of an application to the U.S. Patent and Trademark Office (USPTO).  One of the requirements for the USPTO to issue a patent is that the applicant’s claimed invention be fully disclosed in the application and published in the patent. This is sometimes referred to as the “patent bargain.” This is at the opposite end of the spectrum from trade secrets law, under which a company can sue for misappropriation of a trade secret but only if it takes reasonable measures to maintain confidentiality of the trade secret.  See my prior blog post, “Remember to Keep Your Trade Secrets “Secret.”  Ominously, retroactive application of new patent rules may severely prejudice patent holders in abrogation of the patent bargain.