Yes, you’re correct. I meant to say “trade secret” in my numbered points.
But actually I need to amend what I said there, because of rulings by the U.S. Court of Appeals for the Federal Circuit, which hears all appeals in patent cases.
The Federal Circuit has explicitly held that the commercial sale of a product made using a claimed method constitutes a sale of the method within the meaning of 35 U.S.C. § 102.3
That means that if you sell a product that incorporates a method in its production, then the on-sale bar applied to that method. So, if you choose the trade secrets route, you absolutely forego being able to obtain a patent on that method in the future (after one year).
You have to choose between patents and trade secrets. You can’t have both on the same invention.
The old US system of “first to invent” was changed effective in 2013 to a “first to file” system, primarily to bring the system in line with most of the rest of the world.
Public disclosure in both systems will present a bar to obtaining a patent (or start a clock resulting in a bar) as well as preventing others from patenting the same idea independently. As mentioned, this can be sale of a product or publication of details of the invention. Large companies used to have their own publications (the Bell System Technical Journal comes to mind) where they would defensively publish ideas that they might not be interested in pursuing in order to prevent competitors from patenting them. Such journals were fairly narrowly distributed, but would end p in most engineering libraries.
Hmm, seems to be the reverse of what I thought I was told by our counsel. I may not be remembering the conversation correctly, perhaps he was describing the prior risks versus the current risks with regards to trade secrets. I’ll bring it up with him the next time I see him.
They should. It is a remarkable work.