One of the largest fundamental changes introduced by the America Invents Act was the expansion of the prior user rights defense to patents covering all technologies, as opposed to prior mandates that limited the defense's application to business processes. Although this provision is expected to provide crucial intellectual property protection to parties that have been using an invention in the field for more than a year, some wonder if the legislation may indirectly foster a culture of secrecy that inhibits invention disclosure.

"Generally, advocates of prior user rights in a [first to file] system propound that a defense is necessary because a user who has been commercially using an invention should not be stopped from using that invention simply because a subsequent, independent inventor obtains a patent covering their invention," explained IP Watchdog guest columnist Nicholas Mattingly.

The U.S. Patent and Trademark Office also notes that limiting the prior user rights defense to parties that can present "clear and convincing" evidence of their prolonged use of a technology will guard against systemic abuse. Additionally, the AIA explicitly prohibits the licensing, assignment or transfer of the defense outside of circumstances in which an entire business and asset portfolio is acquired.

But if prior users are able to gain protection while retaining their technological secrets, Mattingly suggested, there may be little incentive for invention disclosure. If such strategies take hold, a lack of available information in the public domain could significantly inhibit scientific progress and innovation.