Trade Secrets and Published Patent Applications

Tewari De-Ox Systems v. Mountain States (5th Cir. 2011)

In 2005, Tewari’s CEO (Dr. Tewari) visited Mountain Systems (MTSR) to demonstrate his “zero ppm oxygen meat-packing method” that greatly extends the shelf life of packaged meats. Prior to the demonstration, the two companies signed a non-disclosure agreement (NDA).  When MSTR allegedly began using the method without permission.

The major catch in Tewari’s breach of trade secret argument was that the bulk of the disclosed method could also be found in Tewari’s already published patent application. (The application was abandoned after receiving a final rejection on obviousness grounds).

Trade secret is derived from state law.  Under Texas law (the law of this case), a successful trade secret plaintiff must prove that (1) a trade secret existed; (2) the trade secret was “acquired through a breach of a confidential relationship or discovered by improper means;” and (3) that the trade secret was then used without authorization.

Patent Publication Eliminates Trade Secret: In a straightforward opinion, the appellate panel held once published, the information in a patent application should be considered “generally known and readily available” and therefore are no longer amenable to trade secret protection.

Tewari argued that the patent application publication should not matter in this case because the defendants obtained their information from him in a confidential transaction rather than from the public source. The appellate court, however, rejected that argument because the application was already published at the time of his disclosure.  (The court noted that the source of defendant’s trade secret knowledge may be important for trade secret analysis if the publication occurred subsequent to the fiduciary relationship.)

Although the material disclosed in the patent application is not protectable under Texas trade secret law, the court held that Tewari may have transferred protectable information that was not in the patent application — such as specific information regarding making and using the invention that was not particularly identified in the patent application.

Remanded for further consideration.

Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

98 thoughts on “Trade Secrets and Published Patent Applications

  1. If the norm was non-publication with an opt-in for publication, what percentage of applicants do you think would pursue the affirmative opt-in publication route?

    None, obviously.

    But that’s not the point. You can’t sanely argue that no option is a meaningful option unless it is the default, or else there would be no options in the world.

    The patentability of one’s claims is the statutory default, and yet one must demonstrate one’s entitlement before being granted a patent.

    It’s the same thing with non-publication – it may not technically be the default, but you only have to state your entitlement to non-publication and then you get it. The non-publication procedure as it stands today couldn’t be any easier or any more accessible. The fact that virtually nobody uses it only shows how little it means to actual inventors and that it’s clearly being politicized beyond all reason.

  2. Yes, MaxDrei – I am on the boards early – and will be departing early – too much else to do since I was here so much yesterday (not a bad thing mind you because for the most part, there were some real good exchanges).

    You now reference my characterization of your comments as “offence” or “insult” which is not appropriate – I was not talking about “offence” or “insult”, but rather, I was talking about “negative” as in contrary – negative does not need to carry to that extreme (if anything the offence is in your coyness in not recognizing what is plainly here and would be secondary to what you actually said inthe first instance), and if you cannot honestly look at your words and see the negative implications – I cannot make you see them. My apologies for failing to teach you what should be obvious to you.

    You ask about my “ranks”, and actually, that is quite simple. I have a list of people that I find not worthwhile to engage. “Provocation,” as you put it here is not quite apt. One can be provocative, without being coy, without being obscuring and without being disrespectful. My list is personal to me and those on that list have shown themselves to be avoided. I have little tolerance for wasting my time engaging those who will not be honest, who would prefer to play games rather than have a fruitful dialogue. They are free to post to their heart’s content, but I choose not to engage them. Some are free to consider this to be “thin -skinned” – I consider it merely prudent. You ask why I do not include Malcolm on my list and the answer likewise is simple. I have noticed (and commented) to Malcolm about the tenor of his posts (to Ping), but Malcolm is not on my list because he has not treated me disrespectfully.

    I hope that this educates you to an acceptable level.

  3. A bright good morning New. I see you are already at your keyboard at 07.23am. Can we agree that I’m being provocative but that you are a bit too quick to take offence, and adept in finding an “insult”, where none was intended and none was uttered?

    What are these “ranks” of yours, that include some regular contributors, but not others, like Malcolm Mooney? Your criterion for inclusion in the ranks cannot possibly be the degree of provocation they exhibit. so what is it then?

  4. Lionel,

    I do not think difficulty or fear are the points that you should be focusing on. There are many things worth doing that are difficult and fear can be good or bad, but the use of that word tends to paint the holder of that emotion as irrational.

    Neither portrayal is on point to my posts regarding the understanding and maintenance of the quid pro quo.

    I also agree with you that the procedures allow a change of mind to go for foreign filing. Those procedures are not difficult and should allay fear – but again, such is a non sequitur to my points.

    But that does not address my point directly above. So I will ask again:

    If the norm was non-publication with an opt-in for publication, what percentage of applicants do you think would pursue the affirmative opt-in publication route?

    And please do not think I am avoiding answering your return posts – I will return to these boards tomorrow.

  5. Good morning MaxDrei,

    You indicate that I will not explain, but I feel that I have explained – twice. If you cannot tell the negative implications from the very words you use to describe the situtation, then my continued efforts to explain those very words of yours must fail.

    How else can “wrong,” “error,” “mistakes” be taken as the your comments to our discussion of US patent law were directed?

    You do say “write your own laws” – but by adding “Good luck” you draw the very own critical (negative) reference to doing so. The fact that you refuse to see just how “provocative” your language choices have been and that your backpeddling to a stance of “simple obsevation” of what the rest of the world does without a subjective stance simply is not credible. To wit, what possible effect on writing a new US law would “observation” of the rest of the world bring, unless you intend for the US to employ that observation to some extent? You are being coy and I do not appreciate it.

    I note that you have used this “teach me,” “I just want to learn” and “explain to me” approach before – when you clearly not only do not need to be taught, but that you do not want to be taught. Here in this instance I feel that you do not want to be taught. I have clearly given you my viewpoint and asked you to defend the negative character of your comments.

    And while your choice to not defend those comments is your own, please do not insult me by this oblique “You won’t explain then. But that’s OK. I will draw my own conclusions.” If you want to join the ranks of 6, IANAE and Ping, that too is your choice.

  6. As I said in other posts, if an inventor foreign files, his application will be published, regardless. If he does not plan to he should affirmatively say that if he wants it to remain anonymous. Why is that hard?

  7. Why don’t they affirmatively opt-out of publication? I know the consequences for subsequent foreign filing are draconian, but if the clientv is confident he is not filing overseas, he should opt out. You can still foreign file if you give the USPTO proper notice.

    I know how the system works, I just don’t understand the fear.

  8. Pro Se, in a way, all this case does is filter out of the information disclosed and required to be confidential that information that is in the public domain, and provably so.

    This case is completely unremarkable for that proposition. It certainly tracks trade secret law. As well, NDAs almost always allow the use or disclosure of the disclosed information if that information goes into the public domain through no fault of the receiving party.

    Then, we have the Listerine case.

  9. Malcolm, you and I both know there is no case law on this. Precision Instruments is the closest. Still we have the data point of what the PTO thinks the duty is. While that is not law, it is a data point.

    I had a situation once, many years ago, where I personally had documentary proof of perjury that was committed in a court case involving a patent, proof that was otherwise unavailable to the defendant. I recall sweating blood on whether to disclose the matter to the court in question.

    But, rather than do that, I kept my mouth shut, but did disclose the problem to my client. Then wouldn’t you know it, my client acquired the very patent involved — while the court case was still pending! I was not involved in any way, however, with the patent case.

    Now what was I to do?

    Malcolm, I seek your sage advice.

  10. My own opinion is that a practioner cannot actively take part in what amounts to a fraud. He cannot assist a client in obtaining special advantage from special knowledge of prior art held only by the client. He cannot participate in PTO proceedings where his own client obtains advantage by not disclosing the prior art or fraud. He cannot participate in court proceedings where he actively promotes a fraud on the court.

    Completely non-responsive.

    Sheesh, Ned, just admit you mispoke about this alleged duty with respect to third party patents.

    What’s the big deal?

  11. ANL, I merely cite the PTO's opinion.

     

    My own opinion is that a practioner cannot actively take part in what amounts to a fraud.  He cannot assist a client in obtaining special advantage from special knowledge of prior art held only by the client.  He cannot participate in PTO proceedings where his own client obtains advantage by not disclosing the prior art or fraud.  He cannot participate in court proceedings where he actively promotes a fraud on the court.

     

    He has to drop out just as one attorney did in Precision Instruments when he was confronted with the fraud of his client.  He cannot continue to represent his own client in proceedings before the PTO knowing of the fraud of another party to that proceeding.  He has to report it or quit if his client forbids it.   I am not sure whether the PTO would  sanction an attorney from withdrawing for this reason, but I think they should not.

     

    That is my view.

     

     

  12. A new light, unfortunately the law does not provide for patent office interferences between issued patents. That is one reform we could make, where the Commissioner sua sponte, or either of the two patent owners, could request an interference between two patents. Not only would this solve the problem that I perceive, I think would also solve problem involving re-examination where a patent in re-examination is rejected over another patent, not a statutory bar, that is claiming the same invention and where the patent under re-examination can prove prior invention. If he files an affidavit demonstrating prior invention to the proper degree, the commissioners is supposed to invoke an interference. However the Commissioner has no authority to do that with respect to issued patents.

  13. New, the impression you are supposed to take from my words is that Europe has always learned from the US legal system, and that I expect Europe also to learn from any new US patent statute. I’m baffled why you find that so provocative. Will you explain?

  14. I agree with Malcolm.

    “Duty” does not exist wherein the origination of that duty is not somehow required.

    I do not see how a practicioner can be dragged into third party affairs.

    Extending this logic would require that all practicioners to police the applications that are published and even the patents that are published weekly in order to make sure that none of these items violate what the practicioner knows is already patented.

    Ned – you must be careful in your over-generalizations. Consider just what creates a duty – I owe no duty to those I have not engaged – no duty whatsoever, even though I may be quite knowledgable in a particular art field and even though I may review published applications on a regular basis in that art field.

    Or are you instead also talking here about creating a new rule or new duty?

  15. Thank you Ned.

    Now that we are clear that the existing law is not what you would have, we can look at this new rule you want to suggest.

    I invite you now to re-read my post and offer a suggestion how this now rule would not swallow the law in place – especiallu keeping in mind the context of how that law came to be. In other words – what type of non-binary control do you recommend that serves the purposes you want AND still serves the purposes of the existing law put into place to protect the applicant in the forced publication era?

    I have already alluded to an option of repealing the forced publication, but I do not think that is what you have in mind. I even would be open to a period of time after patent grant wherein the Commisioner could sua sponte call for a re-eam and/or possible re-issue of the multiple issued patents. In fact, I believe that no new law would be need, as the Commissioner already can sua sponte act in that manner. Additional rule smay need to be crafted to hone the details.

    I am looking forward to the suggestions.

  16. MaxDrei,

    What other impression am I supposed to take from:

    Scientists learn from the mistakes of other scientists, and their successes. Why not patent legislators too? Europe has always learned from US law. It ought also to learn from a new US patent statute. If it doesn’t, something is wrong.

    Especially after you are just finished saying:
    one has to accept the world today as it is today, rather than seeking to wind the clock back.

  17. Now, none of this is the law, but they still have the power to discipline you for violation of your duty.

    Ned, stop ducking. We’re not debating the PTO’s “power” to discipline anyone for violation of their “duties.”

    We’re debating the existence of one particular duty. Namely: the alleged (by you) duty to disclose to the PTO a reference that I believe to be material to the prosecution of a THIRD PARTY’s patent.

    I’m asking you: what is the source for your belief that such a duty exists? Rule, law, whatever. Just tell me what the source is. Is Steve M.’s comment, in fact, the only source that you can show us?

  18. Malcolm, law? Since when in Rule 56 a law?

    I cite Steve’s discussion with the PTO and the PTO legal department’s opinion. Now, none of this is the law, but they still have the power to discipline you for violation of your duty.

    Outside of discipline,the only remedy the courts have is to negatively affect the interests of a patent or a case where the owner was taking advantage of the fraud. A client’s patent is not implicated unless the attorney or the client takes advantage of his or her knowledge of the invalidity of a third party’s patent, such as by acquiring it and enforcing it while suppressing the evidence of invalidity. Now, the cases are repleat with examples of the courts holding such patents unenforceable for exactly this reason. See, e.g., Precision Instruments and Walker Process.

    But until one takes advantage of non disclosure, the client’s patents would be unaffected. Still, the PTO is of the opinion that you still have a duty of disclosure and they have the power over you as a licensed pratitioner to make your life miserable if they discover that you “knew” of fraud or something that would render a patent invalid and did not report it.

    But this does raise interesting issues involving representation just as it did in Precision Instruments. If for example you give a client an opinion that the a patent is anticipated by reference X that he knows about but that noone else does, and you know that the client is hiding the evidence so that they can do advantageous deals with the patentee, what is your duty?

  19. New, where please do I “claim that the US would be in error”. I still don’t see it. Sorry.

  20. Sigh back MaxDrei.

    You are clearly saying more thanUSA has to recognise (accept) as fact that the rest of the world does publish at 18 months“.

    I am addressing the parts of your comments on the “saying more than” – the parts where you claim that the US would be in error.

    I do not accept your comments. If you are retracting them, by no saying you are only saying that the US must recognize that others do things differently, that is one thing. But our discussion was on changes in US law – not on the US recognizing what the rest of the world does.

    If you want to have the dicussion indicated by your comment at 10:27 AM, then let’s have it – starting with answers to my already posted points. If you want to backtrack from your comments, please do so in a direct manner – not with a “Sigh”.

    I am trying not to have a “thin skin”, but would appreciate it if people would actually address the points I make directly rather than obliquely (or not at all).

    It takes two to have a conversation – I really am not into preaching from a soapbox if I am not engaging anybody on the merits.

  21. instead to an untrained jury member and the information content of the document goes unperceived.

    That is not a bug, it is a feature.

    It is up to counsel to show the jury what needs to be perceived – you have found one of the cornerstones of US jurisprudence – the adverserial system that puts the jury as the blank slate before two contestants.

    You might as well try to disband the entire US legal system.

  22. Sigh. I’m not saying the US must harmonise. I’m saying the opposite. If you want an opt-in instead of an opt-out for 18 month publication, feel free. I don’t care. All I’m saying is that the USA has to recognise (accept) as fact that the rest of the world does publish at 18 months.

  23. I already did, Ned. Is Steve M.’s post the basis for your belief that I have a duty to disclose to the PTO a reference that I know is material to the prosecution of a third party’s application?

    If so, please be advised that Steve M.’s comments, while occasionally laser beam accurate, are not the law.

  24. Ned, I think we agree. The EPO’s PSA is totally TSM, done without any opinion evidence, and it works very well. However, this is only because (under the civil law mainland European legal system) those construing the documents (the people inside the EPO) are exercising the specialist knowledge of a PHOSITA. Give those same documents instead to an untrained jury member and the information content of the document goes unperceived.

  25. That would be my 9:25 AM comment above (it may be difficult to catch as the limited nesting here tends to lump the different threads together).

  26. An interference is neither, IMHO.

    Ned, I respectfully suggest that your opinion is clearly not grounded in law.

    I have provide you the rule above that shuld indicate to you what anonniemous succinctly captures in his comment of “set theory”.

    You say we need a rule – but we already have one. 37 CFR 41.202(b) is crystal clear.

    I am afraid that I cannot continue a discussion with you if you choose not to recognize what we have. What would be the point of discussing such an “alternative universe” as if that alternatve was the actual law we currently have?

    Now if you want to discuss a change in what we have, then we can continue to discuss. In that case, please direct your comments to my concerns already posted.

  27. Max, “We need the notion of a PHOSITA so that we can debate obviousness objectively.”

    Objectively? How is that possible if in the end it is a hypothetical opinion of one of PHOSITA? Opinions are not objective, and never can be. Beauty is in the eye of the beholder and all that.

    I have said this before and I will say it again here. It is not possible to have an objective test for obviousness under the current statute. TSM is, however, an objective test that really does not require the opinion of anyone. The art contains the suggestion, teaching or motivation in its four corners or it does not. The evidence is on the table for all to see and it can be rebutted with hard counter-evidence and critique.

    We really need a someone to do a serious thinkpiece on this topic to persuade, but in the end, we probably will need a statutory fix.

    Perhaps a simple fix would be to adopt “inventive step,” but cite the TSM test as the primary test for invention.

  28. ANL and Anon, 122(c) refers to oppositions and protests. It was designed to prevent prior art and other attacks on patentability.

    An interference is neither, IMHO. It is concerned with who is first to invent — a procedure that is not primarily about patentability. The claims have to be patentable to both parties, true, but that is ancillary and not the purpose.

    The rules lump the two species into one, and that is simply wrong. We need a rule on requests for an interference, and that should be permitted any time until the patent issues.

  29. Lionel,

    Your statement is true only if you affirmatively opt-in to the Non-publication route.

    If the norm was non-publication with an opt-in for publication, what percentage of applicants do you think would pursue the affirmative opt-in publication route? I think not more than 2% would bother.

    To start a new wrinkle to the discussion, We still have the IDS requirement that anything germane that develops in a foreign jurisdiction that may affect patentability of the separate US jurisdiction must be shared with the US Office. To me, that is enough.

    I think the point being lost here is the conflation of seeking world coverage and the actual understanding of the US quid pro quo.

    I have been on my soapbox quite awhile this morning and need not say more in this post, other than there are two distinct notions at play if one seeks patent protection in other legal environments – that route should not confuse what patent protection means here in the US, and the proper context of the US quid pro quo. We should keep a sharp eye on the different philosophies in play.

  30. MaxDrei,

    Let’s leave the discussion of what the US law is today for a moment and entertain a going forward view of a new US patent statue. And let’s be clear that my points above reagarding the existing state of US law stand.

    Going forward, I believe that you are making one massive assumption that the 18 month publication rule (without regard to the quid pro quo understanding) is something that must be embraced as a positive change.

    As I said above – I am for understanding the particular US understanding of quid pro quo and for maintaining that ideal.

    If the rest of the world does something that destroys that ideal, then the rest of the world is making a mistake, in my opinion. I do not abide by your assumption that this is something to be learned just because everyone else is doing it. I most emphatically deny your position that the US must “learn” this aspect or else something is wrong with the US. You need to show me why abandoning the US ideal of quid pro quo is such a benefit. I do not accept the rationale of “well everyone else is doing it, so it must be the right thing to do”. Change for change sake is not accepted.

    Show me how the ideal of the US quid pro quo is preserved or even enhanced, and I will join you in celebrating the change. Can you do that?

    You are incorrect that “one has to accept the world today as it is today” in regards to what the US decides that its laws will be. There is no such mandate that the US must harmonize completely with the rest of the world. I think that it is precisely such posts as yours here that alarms those with an understanding of the particular benefits of the US patent system when those crying out for harminization allude to its inevitableness. I do not yield to such views.

  31. Generally speaking if the disclosing party has disclosed it to anyone, any where in the absence of any confidentiality requirements, I would say it no longer qualifies as a trade secret. It does not and should not matter how little known it actually is.

  32. As I said in response to another. The AIPA had no effect on inventors. Prior to the AIPA, if an inventor filed abroad, the application was published whether it issued or not. If they did not file abroad, it was not published.

    If you do not file abroad today, your application will not be published either.

  33. Until 1978, the UK did not publish till tafter the patent application had been let through to issue. Since then, the 18 month from prio date publication rule has become de facto, all over the world. I think contributers like me and IANAE are only saying that one has to accept the world today as it is today, rather than seeking to wind the clock back. Feel free to write whatever laws you like. Good luck. Scientists learn from the mistakes of other scientists, and their successes. Why not patent legislators too? Europe has always learned from US law. It ought also to learn from a new US patent statute. If it doesn’t, something is wrong.

  34. MaxDrei,

    I readily admit that my views are geared to the US laws (and specifically to the US laws under discussion here), and should be read in that light.

    What other countries decide to do has no bearing on the US patent system in so far as the history of the quid pro quo as I have detailed it. What other countries have done, or chose to do, cannot change the historical basis that sets the context of US law.

    In fact, I would dare say that any attempt to infuse what the rest of the world does can only obfuscate that critical understanding of the context of US law, and thus is something to be expressly avoided.

    I grant that going forward, what the rest of the world has done may indeed be valuable if Congress is rewriting this section of law, but only then should that come into the picture. It should not be entertained in the present context of what the law currently is.

    I do recognize your zeal for the laws you are familiar with (this is the second time this week that you have called for me to think about non-US implications), but are you confusing US law and its development to its existing state with the laws of other countries? I think that a better understanding of what the US law is now can be achieved if you set your zeal aside temporarily.

    As Ned has pointed out, sometimes the best move is to move backward (I am thinking specically of those sections of he 1952 act that took back the law from teh errant 1940’s Supreme Court decisions). In this sense, I must refute your comment about “status quo” – In fact, if you read my posts you can readily see that I am pointing out that many do not understand “status quo” as it regards to “quid pro quo”- and that is precisely why the historical context is so absolutely critical here.

    And thus my suggestion is grounded in the history of the US quid pro quo. MaxDrei, does the rest of the world share that same history, share that smae appreciation? My suggestion is along the lines of preserving that ideal. If the rest of the world shares that, then I am eager to hear your suggestions on how the rest of the world presreves that ideal. But if that ideal is not preserved, then I am plainly against the change to what the rest of the world does (I am not a fan of harminization for the mere fact of doing everthing the same).

  35. New writes: “Myself, I would abolish publication” and I’m wondering how he is going to do that outside the USA. And if he can’t do it outside the USA, what does he gain (over the status quo) by doing it only inside the USA?

  36. Ned,

    Yes, I think that the discussion is correctly centered on the law of 35 USC 122(c). And while I understand your desire for an escape valve, my concern is that having such would swallow the rule. It seems that any such escape valve would have to be binary, either fully open or fully shut. If fully open, then you have no law.

    The law as written clearly states who has control – it is the applicant. And as I have written, this control does not mean the applicant is scott free to obtain a patent when he should not. I think that you keep forgetting this and keep assuming that an applicant, knowing that someone else knows of patent-destroying art, would still eagerly pursue both obtaining and enforcing such a terminally ill patent (and even given such can happen, there is still the escape valve of the courts). And while I agree that the Office should not issue such a defective patent to begin with, I am even more concerned that the Office obey and follow the law and rules in place now, the very law and rules agreed to in order to preserve the actual meaning of the quid pro quo.

    Also, there are other areas of law governed by time limtis – why not here?

    Further, as I have explained in other posts, these mechanisms are the vestigal effects of protecting the applicant in the changed system to forced publication (if you think this is not forced, you are mistaken – an easy compromise would be to make the norm not published with an optional opt-in – how many people do you think would actually use tht path? I would wager massive amounts that it would not be many at all). Remembering just what the quid pro quo means is a critical backdrop to understanding law in this area, such is the context that must flavor the evaluation here. If you think the law as written favors the applicant, you would be correct because that is how it was written. It was done purposefully.

    Many are in a rush to ignore this and redefine the quid pro quo as an exchange of disclosure for a mere possibility of patent. The change in law to forced publication simply did not go that far.

    How would you regulate this “late information” so that the rule still has meaning? so that the applicant is still protected? Myself, I would abolish publication and simplify this quagmire. I recognize a problem with that suggestion, in that the spotlight on the Office’s inability to timely examine applications would be even brighter, but perhaps that is not a bad thing. Perhaps the spotlight should be brighter. Maybe then Congress would stop pilfering the money applicants give to the Patent Office and would stop spending that money on non-applicant things.

  37. We need the notion of a PHOSITA so that we can debate obviousness objectively. It has no place in anything except debates on whether or not the claim in view is bad, ie something within its ambit was obvious, back on the relevant date (perhaps 15 years back in the past). For that debate, the notion is indispensible.

    High, where do we find the court here invoking the notion of the PHOSITA? I skimmed the Decision but did not smoke it out.

  38. So? Your post demonstrates the pointlessness of Babel Boy’s original

    You do not have to publish under AIPA if you do not foreign file. On the other hand, prior to AIPA, if you filed abroad your application would have been published.

    I fail to see the loss to inventors.

  39. It appears that thre are several assumptions carrying over from the day to day dealings in patents.

    1)Let’s call it the influence of PHOSITA. Especially after KSR, PHOSITA have become omniscient. Anything possible to be known is considered to be known. Even in nonanalagous arts if the solution (or parts of the solution, like a jigsaw puzzle) is even tangeantilly (sp?) related.

    2) Let’s call it the abandonment of responsibility. As the interchange between Pro Se and MaxDrei indicate, in a private interchange between two parties, there are responsibilities to be observed. THe NDA is a form of contract and everyone should remember that there are rights that can be contracted away. There are reasons why lawyers are involved in creating and accepting contracts.

    This might be a situation that the concept of PHOSITA is being improperly applied (the after the fact scouring, and the fact that neither of the two parties are PHOSITA) and the concept of contract and that responsibility is being negated.

    If you knowingly enter a bad deal (by default, by abdicating your responsibility of due diligence), you should not expect the courts to bail you out later.

  40. Yes,

    Ned is already sitting at my table, please join us and leave your cares behind. The road to my table is wide and easy, filled with good intentions.

  41. Clearly, there has to be…

    Clearly, you are ignoring what is plainly in front of you and merely wanting some other process in order to fit your thinking of how things should be. The controlling law simply is different than what you want. While a blog is not a forum where legal ethics are required, may I remind you that acknowleding controlling law that is different than your position is a standard we should practice.

    It would be nice to see some acknowledgement, if for at least to see that you recognize what the law is.

    Ned, what does the information above plainly tell you?

    What “is” is not really that complicated.

  42. The reason I originally brought up the whole notion of what became 122(c) was to prevent gamesmenship by dropping prior art into the proceedings late and to prevent pre-grant oppositions through protests and public use proceedings. Clearly, there has to be an escape valve if material information is discovered late in the proceedings, or if knowledge of the relevancy of the patent application became known later.

    Further, there needs to be some kind of procedure limited to owners of interfering patents, because they have a legal end-around in the form of a (no defect) reisssue application that can include a request for an interference suggesting, for example, one of the patent’s claims as the basis for the count. I doubt the PTO would actually issue a second patent on the same invention if they are adequately informed of the facts in time.

  43. Pro Se, I see your point. Clearly, notwithstanding this case, as an information receiver, one has to be careful before signing a NDA or paying good money for “confidential” information. Otherwise, the imparter of “confidential” information might pocket the money, hand you a copy of his 99 page WO document, that published 4 months earlier and say “There you go”.

  44. This is just plain wrong. Information can lay fallow in published patents for decades without discovery by competitors. It might be public domain, but that does not mean it fails to meet the standard of “not generally known.”

  45. I find this decision troubling for a number of reasons, not the least of which is the almost automatic assumption that a document generally available to the public forecloses the assertion of a trade secret in what the document discloses. I guess a publicly available document is some third world nation might very well be used to try and defeat a claim in the US.

    Where I believe cases like this go wrong is when a court loses sight of the fact that a trade secret is a matter generall between two private parties, one saying “I know something you don’t” and the other saying “Show me”. Sometimes the recipient speaks up and says “Big deal. I already know that.” That, however, is a rarity. Rather, a disclosure is made, things proceed splendidly until the discloser receives word the confidence may have been breached, and then the recipient, after the fact, scours every nook and crany to try and find something, anything, that will ostensibly let him off the hook. The problem here is that even though he may find something, the simple fact of the matter is that a confidence was breached, and it is the confidence that the law of trade secrets is intended to fortify. While I do not recall the specific case because it was so many years ago, a party had knowledge of an issued patent, but would only disclose it in confidence. Of course, the recipient later tried to wriggle out of the deal, but lost, at least at the trial court level, for the very reason I have previously noted…giving meaning to a confidential relationship.

    The USTA and The Restatement 3rd of Unfair Competition do make more of this situation than is the case under the Restatement 2nd of Torts, which I believe is unfortunate. In their waxing poetic about trade secrets, they overlook the importance to be given to the establishment of confidential relationships. It is in part for this reason that I have always struggled with trying to decide if a trade secret is truly “property”, the dicta in Ruckelshaus v. Monsanto notwithstanding.

    On a final note, it would have been helpful to have the “NDA” available for review. A competently drafted agreement would have cut the recipient off at the legs. Unfortunately, the vast majority that I have seen (well over a thousand) are so pathetically drafted that calling them an “NDA”, “Confidentiality Agreement”, “Proprietary Information Agreement”, etc. is a misnomer at best.

  46. Ned There is a general belief in the bar that one does not have to disclose information to the PTO about specific knowledge of … references regarding the pending applications of others in a manner so that the information will get to the examiner in time.

    It’s a bit more than a “general belief”, is it not, Ned? Seems to be an uncontroverted fact. If you believe I have a duty to disclose to the PTO a reference that I know is material to the prosecution of a third party’s application, let me know the basis for your belief.

  47. Ned,

    The rules on suggesting interferences may help you out:

    37 CFR 41.202(b) Patentee. A patentee cannot suggest an interference under this section but may, to the extent permitted under § 1.99 and § 1.291 of this title, alert the examiner of an application claiming interfering subject matter to the possibility of an interference. (emphasis added)

  48. Listen 6, and I give you a compliment, I have not investigated the case as you have, but just reading your post would make want to reconsider the case. Reading what patent hawk says in his briefs makes me want to vomit.

  49. anon, I think your view would legally prevent any interferences until after grant. But, since we have no post grant interference procedure in the PTO, that cannot be a proper interpretation.

  50. Your view of “opposition” is much too narrow.

    “Opposition” means to oppose – there are plenty of reasons that one may have to oppose, but those reasons simply are not a part of the calculas of the law here.

    You do reconize which law is on point here, correct?

  51. “… against an individual pro se.”

    Though they clearly did not do so in this case.

  52. sky, I thought the same thing. But that is water under the bridge given that the patent was never granted regardless.

  53. No, I do not. An opposition involves only the question of patentablity and may be filed by anyone. An interference may involve questions of patentability, but it can only be filed by one disclosing and claiming the same invention. The primary issue in an interference is priority of rival inventors to the same invention. That issue cannot arise in an opposition.

  54. Also earth shattering – something that’s obvious in view of the prior art is still eligible for trade secret protection.

  55. In order for the plaintiff to win a patent lawsuit, they must prove to the court that they were in fact the original inventor, and that the defendant infringed their patent. The defendant must then prove one of the following in order to win the case:

    • The patent was not infringed
    • The patent is unenforceable
    • The patent was never valid

  56. In reality the examiner comes up w/ some brain-ded 103 rejection that doesn’t cite a single Graham factor. Applicant traverses and gets a non-responsive final. Applicant can’t afford appeal or continuation.

    In reality, we have the twin problems that the individual inventor is convinced that his own interests are the “right thing” (and therefore any 103 rejection is inherently “brain-ded”), coupled with the failure to budget for predictable expenses when making a business decision to apply for a patent in the first place.

    We all know that applications get rejected, and that final rejections are common. They’re even more common when not a lot of time/money was spent on drafting the original claims. No applicant should ever be surprised when these expenses crop up.

    Also, I’ve heard rumors that some examiners are reachable by phone, and occasionally you can even go see them in the wild. They’re pretty responsive then, if you don’t catch them during feeding time.

    And it’s actually not the price we pay for harmonization, because publication is very much not harmonized. You only have to let the PTO publish your application if someone else was going to do it anyway. Otherwise, they’ll gladly keep it to themselves if you ask nicely.

  57. Pro se litigants are crippled by a misconception shared by virtually all non-lawyers: they think judges have to do the right thing.

    More significantly, they share the misconception that what they’re asking for is necessarily the right thing.

    It is possible, believe it or not, for Microsoft to fairly and rightfully win a court case against an individual pro se.

  58. Yours is the Pollyanna version of patent prosecution.

    In reality the examiner comes up w/ some brain-ded 103 rejection that doesn’t cite a single Graham factor. Applicant traverses and gets a non-responsive final. Applicant can’t afford appeal or continuation. Lawyer gets his $$. Public gets the invention. Inventor gets squat.

    Under “proper” QPQ, even if the claims were allowed, inventor could still change his mind prior to paying the issue fee and keep his subject matter secret. Forced publication cuts off a lot of options and makes a joke of QPQ.

    It’s the price we pay for harmonization.

  59. Pro se litigants are crippled by a misconception shared by virtually all non-lawyers: they think judges have to do the right thing.

    They don’t realize that, as humans, judges also have the option of being aholes and if you don’t suck up to them, they will exercise that option freely, never mind what the facts or law of the case require.

    We are seeing that misconception articulated in this case . . . and the consequences.

  60. Man seriously, all he had to say was that an element of his claim was missing. Instead he goes off on tangents about “functionality” and calling pixels of light, rather than pixels per se, on a screen “structure”.

    I swear to go d there is no helping this man. It as if someone is handing him a victory on a platter and he just won’t take it.

  61. Fixed.

    Broken, you mean. As long as the application isn’t published, you still have a third option of keeping the whole thing to yourself.

    Once it’s published, it’s not the PTO’s fault if any patentable invention you disclosed isn’t worth the issue fee to you. Unless that’s due to PTO delay, which I completely agree is a serious problem that needs to be fixed.

  62. Once your application is submitted, there are essentially two possible outcomes.

    Fixed.

    Rather points out the red herring of IANAE’s subtle path.

    Ever trying to twist patent law to minimize the applicant’s position. With friends like these, who needs enemies?

  63. Oh the fun we could be having, had the Hawk been man enough to keep his comment section open…

    :-)

  64. You are trying to draw an argument where none is being made. Please take this one step at a time.

    The first question at hand is direct and simple:

    Is a pre-grant interference an opposition?

    The answer is clearly “yes.”

    Do you agree?

  65. “the court held that Tewari may have transferred protectable information that was not in the patent application — such as specific information regarding making and using the invention that was not particularly identified in the patent application.”

    Wouldn’t Tewari run into the risk of a 112 Best Mode violation if there was specific information regarding the making and using of the invention that he didn’t disclose? (Assuming he had all of that info at the time of filing, and chose to hold out.)

  66. Off subject but of interest: P-Hawk has posted his request for reconsideration/en banc hearing.

    After getting well and truly spanked for accusing the USDC judge of impropriety, he now accuses the CAFC panel of being vacuous, contemptuous, theives.

    “That technically vacuous panel conclusion shows confusion.”

    “Why is Odom’s advance “insignificant,” as the panel contemptuously found, without evidence or technically grounded rationale?”

    “That is theft under the pretense of law.”

    “With all due respect, what is weak in this case is the courts abusing the law to rob an inventor of his rightful intellectual property by mumbo jumbo because corporate interests want to freely use it.”

    Some one read this guy the first rule of litigation: When you’re in a hole, put the fk’ing shovel down.

  67. Yes – but only if no foreign rights were going to be pursued.

    Yes – but who cares about USPTO publication of a “secret” that some other patent office was going to publish on the same day anyway?

  68. Now it’s: yeah, you disclose everything to the public and we’ll decide whether or not to give you a patent.

    Not exactly. The PTO doesn’t have any choice but to give you a patent, provided you draft a claim to something patentable. The statute is very clear on that.

    Once your application is published, there are essentially two possible outcomes. Either you haven’t disclosed anything novel and non-obvious (in which case your disclosure isn’t that big of a deal anyway), or you have disclosed something novel and non-obvious and it’s entirely your business decision whether you want to spend the money to claim it or leave it in the public domain.

  69. Anon, OK. Can the question of interfering claims be decided in a post-grant opposition? Let’s assume that the newly issued patent claims the same invention as in an issued patent. During the opposition, that patent is cited against the newly issued patent and it is not a statutory bar. Can the patentee file an affidavit of prior inventorship?

    No?

    What?

    Think man. The only way to resolve the situation is in an interference and the only way to do that is to catch one of the patents before it issues. The PTO has no jurisdiction to declare an interference between two issued patents.

  70. and pre-grant interferences are not oppositions.

    I would beg to differ.

    They may be justified oppositions, but they are oppositions nonetheless.

  71. I wonder if Therasense is going to address this issue in any way.

    There is a general belief in the bar that one does not have to disclose information to the PTO about specific knowledge of fraud or references regarding the pending applications of others in a manner so that the information will get to the examiner in time. It appears that the PTO does not share that opinion, and encourges such disclosures. The problem appears to be that there is no good way to get that information reliably to the PTO in a way that is both effective and which also prevents harashment or pre-grant oppositions.

    In that other thread, I suggested that the filings be authorized and considered to the extent that the to be issued patent interfered with one’s own patent as in the Radio case, or as it appears in Steve’s case. This universe of possible complainants is small enough to prevent harrasment, and pre-grant interferences are not oppositions.

  72. The question of whether the disclosure was of confidential information is central. On Federal policy grounds, one has a right to use that which is in the public domain and state law cannot/should not protect that which the Federal goverment has declared, by not granting a patent, freely available to all.

    We can only speculate how this case would have come out had the disclosure been made before the publication, but I would argue if I were the defense that the issue of whether the information was in the public domain (assuming the publish application disclosed everything that was the subject of the NDA) was decided at the Federal level when the patent application proceedings terminated in a final rejection of obviousness.

  73. On this whole “quid pro quo” issue I (of course) have a different perspective. That is because I must routinely give my Us clients FTO opinions on published WO documents. I see them as “Keep Off the Grass” Notices. They typically have a range of claims. Those of the broadest scope are usually pretty scarey, at first reading.

    Seems to me that the chief beneficiary of 18 month publication is the inventor (supposing that the WO contains a kernel of novelty, of course). Imagination and the caution of lawyers writing FTO opinions does the rest. And, as somebody upthread observed, if you don’t like the rules on the level playing field, you can always confine your game to the homeland, and venture no further afield.

  74. Tewari WO 2004/103081 was published December 02, 2004. It has 99 pages, of which 42 sheets are of drawings. I read that he spoke with Mountain in 2005. One would think that, by then a diligent, inventive and assiduous Tewari had likely accumulated a lot more confidential information than was made available to the public in December 2004, bearing in mind that the content of the WO was sealed on the PCT filing date of November 23, 2003.

    Oh and, by the way, the ISR lists 6 relevant prior art references, and the PCT was not pursued into the EPO. I wonder why.

  75. The 1952 Congress, as a whole, decided that false marking was a societal evil that undermined the integrity of our patent system, which system conceives of limited monopoly in return for inventive disclosure. So serious was the problem that they changed the earlier statute’s $100 minimum fine per offense to one that had a $500 maximum fine per article.

    Apparently, Congressman Darrell Issa believes that more Government and the expenditure of taxpayer dollars is the better way to address that societal evil than by having private individuals do the job for the Government for free.

    By the by Fortune 500, section 292 is a criminal provision and the settlements paid there under are fines! Accordingly, do be sure that they are not used to pare down gross income on your corporate returns under the guise of their being ordinary business expenses, or the next qui tam case I file will be pursuant to 26 U.S.C. § 7623.

    [Yahoo! The deflector shields have malfunctioned and I am once again able to post here on Big IP’s Mouthpiece Blog!]

  76. Yes – but only if no foreign rights were going to be pursued.

    You have to love globalization.

  77. It really is the message that counts.

    Why don’t we just rehash that whole long thread on the topic of the ends justify the means?

    After all, Steve, that is your message.

    Welcome to my table.

  78. Couldn’t the prosecutor have just requested the application not be published under 35 USC 122?

  79. That or because they like wasting money on legal fees for suits they have no chance of winning.

    Pretty amazing – something that’s not secret isn’t a trade secret. That’s earth shattering.

  80. Tewari’s situation appears to be another example of applicants being forced to spill their guts to the world on the off-chance they’ll get a patent. This is NOT the mythical quid pro quo we were all taught to know and love. QPQ is now qrap.

    Prior to the AIPA, which gutted the QPQ with the publication requirement, Tewari would have been OK. If the PTO whacked his application, then whatever was in it could not be used against him by his competitors.

    That was the original deal all the way back to the Patent Act o’ 1790 — the inventor was not required to disclose the invention until AFTER he was granted the patent. If the PTO withheld the quo, then the public didn’t get to see the quid.

    Now it’s: yeah, you disclose everything to the public and we’ll decide whether or not to give you a patent.

    It would be like a car salesman saying “You give me the cash for the car and I’ll decide whether or not to give you the car.” What a deal I have for you . . . it’s called a US patent application.

  81. Apologize for the off-topic; was out of the office during the discussion concerning Radio Systems v. Accession; but have something directly related to such which may prove useful and of value to others:

    During the prosecution of recently issued 7,904,337, I came across a later-filed app (11/836,011) which I believed was anticipated and/or rendered obvious by ‘337 (then 11/250,908).

    Because I was naturally concerned that a patent might be issued for an invention I had already come up with, I alerted both my examiner and–more importantly I presume–the examiner handling ‘011 of my belief.

    In addition, I spoke to two very helpful gentlemen; one with the Office of Patent Legal Administration (OPLA) and one with the Inventor’s Assistance Center; who both confirmed my suspicion that I did in fact have a legal duty under 37 CFR 1.56 to notify the Patent Office of my anticipation / obviousness belief.

    Because it was too late for a 1.99 filing, they instructed me to place a notice in my own file stating this belief concerning ‘011 (Preliminary Amendment II dated 03/11/2009; Remarks).

    Thereafter during its prosecution; as I came across other apps which I believed were anticipated and/or rendered obvious by ‘337; I continued to file Notifications to my app.

    So the Office does want to know of these important prior art matters; even if it’s too late for 1.99 filings. Unless baseless and/or it rises to the level of harassment, the notification who and how of such important matters during prosecution shouldn’t matter.

    It really is the message that counts.

  82. “Tewari argued that the patent application publication should not matter in this case because the defendants obtained their information from him in a confidential transaction rather than from the public source”

    On the other hand, I lulzed.

    But hey, they probably did all this for the lulz anyway.

  83. In 2005, Tewari’s CEO (Dr. Tewari) visited Mountain Systems (MTSR) to demonstrate his “zero ppm oxygen meat-packing method” that greatly extends the shelf life of packaged meats.

    Everybody knows that the best way to extent shelf life is to dip the meat in a solution comprising at least 100 ppm peracetic acid until it’s safe to eat.

Comments are closed.