By Dennis Crouch
Professors Adam Mossoff and Richard Epstein recently had an interesting discussion on the public policy concerns over the current patent system. Both professors are active participants in Federalist Society debates, and this discussion stems out of that format.
The audio podcast is available for free at this link: http://www.fed-soc.org/publications/detail/patent-rights-a-spark-or-hindrance-for-the-economy-podcast
And if Coke said that the formula is secret and the courts will not give you discovery, how do you prove your case?
The first thing you do, obviously, is draft your patent claim such that infringement can be ascertained by analysis of the defendant’s product. Then, you can run some Coke through a gas chromatograph or whatever, and you don’t need discovery of a third party’s trade secret at all.
Your other option is to claim something you can’t identify in your competitor’s product at all, which is probably not the best strategy.
IANAE, I agree with your analysis. The process is not prior art and still may be patented. The Coke compound, though, is prior art.
Now, how to proved what it is. As defense counsel, do you have to reverse engineer Coke to determine what the compound is, or may one simply ask Coke what it is?
And if Coke said that the formula is secret and the courts will not give you discovery, how do you prove your case?
But given that the formula is secret, even if it were the same, is your invention anticipated?
If the recipe itself is not available to the public, the recipe for Coke is not prior art. Unless someone wants to make up a “product of your market competitor” exception, which would at least have some footing in the statute as being “on sale”.
A claim to the final composition, however, would be in trouble.
A claim to a set of written instructions for making a soft drink would be fine, as long as you could find a computer to read it.
IANAE, since we have had similar discussions before, but I would like your views on this:
1) Known and used require publicly known and publicly used. Generally, this requires that the knowledge or use be non confidential.
2) published similarly means available to the public, i.e., without a confidentiality obligation
3) third party trade secret use is neither publicly known or publicly used.
4) a public use has to be enabling to anticipate.
Now, with the above in mind, take a soft drink formula that is patented. You, as defense counsel to AJAX cola, believe the patented formula is the same as Coke’s formula. But given that the formula is secret, even if it were the same, is your invention anticipated?
Can you get discovery of the Coca Cola Company to show that the formula is the same?
I think that it is important to notice that Professors Adam Mossoff and Richard Epstein recently had an interesting discussion on the public policy concerns over the current patent system. Both professors are active participants in Federalist Society debates, and this discussion stems out of that format.
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