Patents

USPTO’s Second Trade Secrets Symposium Looks Back on First Year of DTSA and Ahead Toward Challenges of International Trade Secrets Protection

On May 8, 2017, the United States Patent and Trademark Office hosted its second event on trade secrets. When we covered the USPTO’s inaugural trade secrets symposium held in January 2015, there was a palpable sense among DC insiders that, at long last, federal trade secrets legislation was imminent.

Readers of this blog of course know the rest of that story: obviously the biggest change in the landscape since the last event was the passage of the Defend Trade Secrets Act of 2016.  In fact, the USPTO intentionally timed this event to fall near the one-year anniversary of the DTSA’s passage.

What else had changed in the last two years? To answer that question, I once again traveled to USPTO headquarters in Alexandria, VA to attend the symposium and provide TSW readers with the following report. READ MORE

Trade Secrets v. Patents: Considerations in Choosing How to Protect Your IP

Intellectual property owners may seek to protect certain information either by obtaining a patent or by maintaining its secrecy. A patent provides strong, exclusive rights for a fixed period of time, generally twenty years. A trade secret may last indefinitely but protection can be lost through independent development, reverse engineering, or failure to maintain secrecy. (We previously published a chart comparing the features of patents and trade secrets.) This article discusses those instances when trade secret protection may be superior to patent protection.  READ MORE

500,000 Lines of Source Code: The New “Intangible Property”

Sergey Aleynikov’s six-year trade secret odyssey through all possible configurations of litigation, civil and criminal, federal and state, may at long last have come to an end after the New York Supreme Court recently overturned his only surviving criminal conviction for unlawful use of secret scientific material. We here at Trade Secrets Watch have closely tracked Aleynikov’s journey, recently reporting on his newest victory, and previously covering his convoluted trials and tribulations. In particular, prior to the recent New York Supreme Court decision, the Second Circuit overturned Aleynikov’s convictions under the Economic Espionage Act (EEA) and the National Stolen Property Act (NSPA), which also led to a change in the EEA legislation. READ MORE

Company’s Bacon Trade Secret Claims Are Cooked After Patent Filing

From Minnesota comes a delicious reminder that the protection of trade secrets requires consideration of a company’s entire intellectual property strategy.  Without such a comprehensive strategy, in the most prosaic of terms, a company’s bacon is cooked.

Unitherm Food Systems, Inc. designs and manufactures equipment used to process and cook meat.  It claims to have invented a revolutionary process to prepare pre-cooked sliced bacon that closely resembles the bacon you’d get from traditional pan frying.  You can watch this mouth-watering process in action here. Unitherm treated this process as a trade secret.

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The View from the Beltway: USPTO Symposium Highlights Increasing Economic Importance of Trade Secrets, Likelihood of Federal Legislation

On January 8, 2015, the United States Patent and Trademark Office (USPTO) hosted its first-ever event on trade secrets.  As we noted when we announced news of the event, the mere fact that the USPTO, an office whose primary focus is patents and trademarks, hosted such an event is noteworthy.  So why would the USPTO host an event on trade secrets?

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USPTO to Host First-Ever Symposium on Trade Secrets

The U.S. Patent and Trademark Office (USPTO) is hosting its first Trade Secret Symposium on Thursday, January 8, 2015, at the USPTO building in Alexandria, Virginia. The fact that the USPTO, an office whose primary focus is patents and trademarks, is hosting such an event is noteworthy and indicates the increasing importance of trade secrets in the American economy.

Panelists at the symposium will include experts from academia, the legislative and executive branches, the judiciary, private practice, and industry. READ MORE

On Obtaining and Asserting Both Trade Secret and Patent Protection: The ITC and Federal Circuit Weigh In

We’ve written previously about how intellectual property owners can obtain both patent and trade secret protection in the same technology.  A case out of the Federal Circuit illustrates that IP holders sometimes choose to assert both in the same action – including, notably, in actions before the International Trade Commission (“ITC”).

Last month, in uPI Semiconductor Corp. v. ITC the Federal Circuit affirmed a finding that a defendant in a mixed patent infringement/trade secret action violated an earlier consent order.  The court found the defendant had aided and abetted its customers in importing products incorporating electrical controllers that the defendant had previously stipulated READ MORE

INCUBATE THIS: Trade Secrets Lessons From HBO’s Silicon Valley [May Contain Spoilers]

HBO’s new series Silicon Valley satirizes the tech zeitgeist born and bred in the region that is the show’s namesake by following a group of young software developers on their journey to build the next billion-dollar startup.  While it is too soon to predict whether Silicon Valley will become the next hot show that everyone can’t stop talking about, Trade Secrets Watch cannot help but spot the trade secrets issues that have popped up so far. READ MORE

The Line Between Trade Secrets and Patents: Getting Dual IP Coverage on the Same Technology

shutterstock_141712027Some might think that patents and trade secrets are mutually exclusive forms of intellectual property protection, and they would be partially correct.  After all, a trade secret is information that is kept, well, secret.  Obtaining a patent, on the other hand, requires the public filing of an application that describes the invention in detail.  It would appear then, that one could never obtain both patent and trade secret protection for any particular subject matter. But a recent lawsuit by surgeon-turned-inventor Dr. Enrico Nicolo against the New York law firm Patterson Belknap shows how, in some circumstances, these two forms of intellectual property can coexist and fill gaps in the protections each offers.

Dr. Nicolo’s case is the latest in a series of lawsuits he targeted at Ethicon Endo-Surgery, a medical device and surgical instrument manufacturer, and its representatives.  In a plotline that dates back to the 1990s, Dr. Nicolo alleges repeated, premeditated theft of intellectual property.

Dr. Nicolo obtained or applied for a number of patents covering medical device technologies and met with Ethicon representatives several times to explore a business collaboration related to his inventions.  Ethicon always turned him down, but he claims READ MORE