Often companies are faced with a dilemma in protecting their IP—should the company disclose its IP to the world and seek a patent that will protect its IP for a set number of years? Or, should the company keep the IP a secret perpetually and protect it through state and federal trade secret laws? The answer is typically not one or the other; but, instead, a complex combination of the two. This article outlines a few thorny issues that can come up when balancing these two types of IP protections: READ MORE
To Patent or Not to Patent? Preserving Trade Secret Status During Prosecution
Amid a growing body of unsettled law regarding the patentability of software and business methods patents, companies are increasingly choosing to maintain their valuable innovations as trade secrets rather than risk a rejected patent application. There are pros and cons to both forms of intellectual property protection. However, the decision need not be binary – at least not during the pendency of the patent application. Instead, by opting to go the “non-publication” route, inventors can maintain trade secret protection over an invention during the patenting process and decide whether to forego trade secret status and allow the patent to issue at the end of the patent prosecution process. READ MORE
Federal Circuit Illuminates Right to Disgorgement as Remedy for Trade Secret Misappropriation
The Federal Circuit recently issued an opinion, Texas Advanced Optoelectronic Solutions, Inc. v. Renesas Electronics America, Inc., that addressed several interesting issues impacting the calculation of damages in trade secret actions. Perhaps the Court of Appeals’ ruling of greatest consequence involved its determination that there is no Seventh Amendment right to a jury decision on disgorgement of profits – a remedy also often commonly described as “unjust enrichment.” The Federal Circuit instead ruled that the calculation of disgorgement damages is for the trial court to decide after making findings of fact and conclusions of law. If the decision is extended by other federal courts, it could have wide-reaching implications for claims under the Defend Trade Secrets Act, which allows for unjust enrichment damages as a remedy for misappropriation of trade secrets. READ MORE
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.
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?
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