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[patentdog]

I have an advantaged process that I am currently keeping a trade secret and using to manufacture a product that I am already offering for sale.  If I am careful to keep the process secret, do I still retain the right to patent the process since there has been no public disclosure of the process, and the producrt can is already sold and made by a variety of known processes?

[JimIvey]

If I am careful to keep the process secret, do I still retain the right to patent the process ...?

I don't have case law handy to cite, but the concept is one of "laches" -- the legal rights equivalent of "use it or lose it."

If you rely on trade secrets and postpone filing a patent application too long, you cannot get a patent on the process.  6 years is "too long".  Even shorter periods can be considered "too long".

You should choose between relying on trade secret protection exclusively forever or beginning to pursue patent protection relatively soon.

Regards.

[patentdog]

As I have thought about this, let me rephrase the fundamental question.  Is the "on sale bar" relevant to a process technology, if we have used great care so that nobody outside of the organization has seen the process, we are not disclosing or selling the process, but we are selling a product which is produced by this confidential process.  The product is produced by others by different, higher cost processes.  Our confidential process can not be discovered by examining the product.

We are begining a US utility application and are wondering if we have preserved our international filing rights.

[Isaac]

I have an advantaged process that I am currently keeping a trade secret and using to manufacture a product that I am already offering for sale.  If I am careful to keep the process secret, do I still retain the right to patent the process since there has been no public disclosure of the process, and the producrt can is already sold and made by a variety of known processes?

Selling the product starts the 102(b) clock running on the trade secret process.  What's worse for you is that if  a competitor re-invents the process before you publicly disclose it, the competitor would not be barred by your secret, concealed activity.  See Metalizing Engineering v. Kenyon Bearing.

[patentdog]

Thanks for your help.  In researching the case that you cited, I found this paragraph, which gets to the heart of the matter and directly answers what I need to know:

The Supreme Court decided Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5 (1939), in accord with the basic principle of Egbert... “[T]he ordinary use of a machine or the practice of a process in a factory in the usual course of producing articles for commercial purposes is a public use.” Id. at 20. Invitrogen, on the other hand, did not sell its invention or any products made with it, and kept the invention entirely confidential within the company, distinguishing this case from Electric Storage Battery.

Thanks again, all.

[joeinventor]

So now I'm really confused.  If the Electric Battery case means a "secret process" of making articles for sale is really public use, wouldn't that preclude a competitor from patenting the same process?