Prior User Rights Study Report to Congress - America Invents Act

provides a simpler means of protection and policing of a new technology. 249 By forgoing patent protectionin favor of a trade secret, these entities can more efficiently allocate scarce resources to growth of otherparts of the enterprise. 250Other comments noted that in certain industries, innovation tends to be incremental rather thanpioneering, such as in the electronics and communications areas. 251 These comments pointed out that insuch cases, the more economically rational and pro-competitive solution may be to protect advances astrade secrets, rather than through patent protection. 252 Moreover, forcing such minor advances into thepatent system could, as observed by some comments, create a host of other problems, such as taxingUSPTO resources and flooding the patent system with patents of dubious quality. 253As to the relationship between patents and trade secrets, the Supreme Court in Kewanee Oil v.Bicorn Corp. 254 recognized that trade secrets and patents can legally co-exist and that both trade secretsand patents have value. Additionally, in Kewanee, the Supreme Court recognized that trade secrets willnot impede scientific progress (the goal of Article I, Section 8, Clause 8) because the ideas protected bytrade secrets will likely be discovered by others in a similar time frame, stating that “[n]or does societyface much risk that scientific or technological progress will be impeded by the rare inventor with apatentable invention who chooses trade secret protection over patent protection […] [I]f a particularperson had not made a discovery others would have, and in probably a relatively short period of time. 255In Kewanee, the Supreme Court also noted that trade secrets can be put into public use and therebydisclosed to those who can independently discover the idea. 256A related issue is the consequence that, by filing a patent application, the technology is disclosedto competitors in other countries where the innovator may not, for lack of resources, have sought patentprotection, or where patents are difficult to enforce. 257 Several comments pointed out that this can have249 Id. at 1-2; see also Comments of Space Exploration Techs. Corp., supra note 47, at 2 (noting difficulties inpolicing enforcement in foreign jurisdictions).250 See Comments from Coalition for Patent Fairness, supra note 47, at 2 (suggesting that the choice to file patentapplications comes at a cost of decreased funding for basic research). Cost savings from choosing trade secret overpatent protection can also contribute to a company’s competitiveness in the field. See Comments of SpaceExploration Techs. Corp., supra note 47, at 3-4.251 See Comments from Google and Verizon, supra 173, at 2, 3, 9 (noting the rapid pace and incremental nature ofinnovation in the high technology sector); Comments of the Computer & Commc’ns. Ind. Ass’n, supra note 185, at3-4 (arguing that the faster and more continuous the pace of innovation, the more pressure would be placed on acompany to file for patent protection, in the absence of prior user rights).252 See, e.g., Comments from Google and Verizon, supra 173, at 1-2.253 Comments of the Computer & Commc’ns. Ind. Ass’n, supra note 185, at 4-5.254 416 U.S. 470, 493 (1974).255 See id. at 491.256 Id.257 See Comments of Greentech, supra note 47, at 2, and Comments of Space Exploration Techs. Corp., supra note47, at 2.46