[DannyBee]

"If you invent something and keep it a secret, other people have always been able to patent the same idea, because the law does not require people to read your mind."

This is not right. Prior to AIA it was possible to invalidate a patent by showing secret invention by another inventor prior to the patent invention date, among other things.

See also: Metallizing Eng. v. Kenyon (secret commercial use by party) or Eggbert v. Lippman (secret use in public) or Gore v. Garlock (Secret use by third party).

In fact, there is a bunch of "secret prior art" that AIA eliminates.

[tptacek]

Whoah. How did that work?

Also: from having been through the patent process a bunch of times: does this make it "harder" to obtain a patent by eliminating the ability to sell the invention under NDA before filing? I remember this being part of the M.O. of building, selling, and then patenting technology at companies I've worked at.

[DannyBee]

There were a variety of forms of secret art (in the sense that the inventor could not possibly have known about them when they filed for the patent), they were only brought up in re-exams or trials, of course.

There are also some sad cases where out-of-order patent processing caused later filed patents issued more than a year before earlier filed pending app. You don't get interference proceedings if the later-filed patent issued more than a year before your pending app. You just get a huge mess instead ;)

To answer the other question, since AIA makes secret commercialization not prior art, I expect more people will sell stuff under NDA[1]. Hopefully, more people will publish too.

[1] The statute itself is a bit ambiguous, but the PTO's new guidelines say "The legislative history of the AIA indicates that the inclusion of this clause in AIA 35 U.S.C. 102(a)(1) should be viewed as indicating that AIA 35 U.S.C. 102(a)(1) does not cover non-public uses or nonpublic offers for sale "

[riemannzeta]

Your analysis seems not quite right. Metallizing, for example, is a public use case in the sense that the legislative history uses the term even though the public could not have understood how to make the invention from the public use. I think the legislative history here is meant to say that the clause is meant to have the same scope as the old 102(b) bars except for territoriality. There's stil the new clause though...

[DannyBee]

Yes, i agree with your viewpoint of what Metallizing is about, though Metallizing is still generally considered a secret prior art case, in the way "secret prior art" is used: Things the inventor could not have possibly known about at the time of filing, even if they had attempted to know everything.

In that sense, it is in fact, a secret use, even though the holding was that it was a public use :)