In the United States, section 273 of the Patent Code includes the "First Inventor Defense." Unfortunately, this "first-to-invent-defense" provision bears little resemblance to a true prior user right provision, as exists abroad and as was initially introduced as part of proposed patent reform legislation. The present version has exceptions and limitations that make it meaningless. It is meaningless because "serious and effective preparation" for commercial use is excluded, and it is this development stage that is crucial. The prior invention concerning which the defense is asserted is now required to have been reduced to practice more than one year before the patentee's filing date, and it is precisely within a year that inventions often are conceived independently by more than one inventor due to outside stimuli. The defense, which was to apply only to manufacturing processes anyway, rather than across the board, as it should, was further constricted to cover only methods of doing business, newly patentable in the wake of the State Street Bank decision.
Very importantly, however, a good case can be made in the United States for the general proposition that the trade secret owner has a de facto prior user right to continue the practice of his trade secret based on two major premises. The first is that much thoughtful literature, going back to at least 1944, postulated such a right. Secondly, the fact remains that it has never happened that the later patentee enjoined a trade secret owner.
The 1983 Gore v. Garlock decision has mistakenly been interpreted as putting an end to this debate by resolving the perceived conflict in favor of the patentee. Far from it, this case only held that trade secrets of a third party are not prior art. Such a holding is an entirely different proposition from a holding that the trade secret owner is an infringer vis-à-vis the patentee. Maintaining secrecy is a sine qua non in trade secret law and is not to be equated with "concealment" in patent law. This concealment means, in a 35 U.S.C, § 102(g) context, only too long a delay in filing a patent application in relation to another applicant, i.e., in a situation where both resort to the patent system. This is to be clearly distinguished from a situation where one party relies on the trade secret system and is outside the patent system altogether.