The following are a collection of posts on trade secrets. Trade secrets are essentially of two kinds. On the one hand, trade secrets may concern inventions or manufacturing processes that do not meet the patentability criteria and therefore can only be protected as trade secrets. This would be the case of customers lists or manufacturing processes that are not sufficiently inventive to be granted a patent (though they may qualify for protection as a utility model). On the other hand, trade secrets may concern inventions that would fulfill the patentability criteria and could therefore be protected by patents. In the latter case, the SME will face a choice: to patent the invention or to keep it as a trade secret.
SnippetsTM provides a review of timely developments in intellectual property law. Here is a table of contents of the most recent issue (July 2004):
1. Brian Harris, Caveat Sender: Unintentional Disclosure in Electronic Documents. 2. Thomas Fairhall and Paul Churilla, The Intersection of Trade Secrets and Patent Law: The Prior User Rights Statute, 35 U.S.C. 273. 3. Andrew Williams, Electronic Laboratory Notebooks: Improved Data Storage or Increased Burden. 4. Eric Moran, Festo Extended: Honeywell v. Hamilton Sundstrand.
Those interested can request a pdf version of the publication by emailing the editor.
In this trade secret case, the appellate panel held that Watson had no legal standing to sue Heinz for allegedly stealing his “trap cap” design for squeeze bottles of ketchup. Watson had filed for bankruptcy and not listed any trade secrets as assets. The court found that any property rights in the trade secret passed to the bankruptcy estate and no longer belong to Watson.
The AIPLA is reporting that confirmation of Jon Dudas as Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office is expected soon after Congress returns from its Memorial Day recess.
The patent system is often juxtaposed with a system of trade secrets. A major difference between the two systems is that patented technology is disclosed to the public while trade secrets may remain hidden forever.
It turns out that in many cases, the patent system also promotes secrecy and witholding of information. This is especially true in scientific fields where the publication of research is postponed to await patent filing dates.
In his most recent paper, Dr. Jeremy Grushcow uses statistical analysis of data retrieved from online abstract databases and from the USPTO to demonstrate that secrecy in academic institutions is on the rise.
This paper confirms that granting patent rights to scientists and their institutions succeeds in generating increased industry participation in publicly funded research and increased patenting and commercialization activity. However, the paper also shows that scientists who seek patents are more secretive, withholding publication or presentation of their data so as not to jeopardize patentability. Notably, this paper also observes that even those university scientists not seeking patents became more secretive in response to the 1980 changes. This unanticipated increase in secrecy increases the risk of wasteful duplication caused by the patent system.
Grushcow offers several potential solutions to restore a “norm of data sharing.”
[I]ncreasing the rewards for early data sharing while providing an experimental disclosure exception to reduce the risk that early data sharing will jeopardize patentability.
Another aspect of secrecy that Grushkow did not explore is the period between filing and publication. Shortening the 18-month publication delay would allow for public knowledge at an earlier time in many cases.
Yesterday, the Senate overwhelmingly passed S.1637 that limits tax deductions for charitable contributions of patent, copyright, trademark, trade name, trade secret, know-how, or software. The limit is the lesser of 5% of the market value (at the time of contribution) or $1,000,000. The House bill is in the Ways and Means committee.
Here is your chance to purchase all rights to the Pollution-Free Alternative Fuel Moter Conversion Kit invented by Ron Meritt.
Meritt has designed the conversion kit to allow motors to run on either flamable or non-flammable fuels, meaning that a properly converted motor using this technology may run on just about any gas or liquid, including water.
According to Meritt’s website an eBay auction will begin May 10 and run for 10 days with no reserve. The purchaser will receive
pending patents, trade secrets, a fully functioning prototype engine, and all documentation associated with this invention.
I did not find any patents or published patent applications for the alternative fuel technology (either invented by or assigned to Meritt). This likely means that applications were filed within the last 18 months or that the patents were not filed worldwide.
According to Jim Mateja at the Tribune, Meritt is the
same man who brought us the portable video players for cars, the one in a backpack that can be lung on the front seat so kids can watch their favorite movies.
Good luck bidding!
Update 5/10/04: Some additional information has been provided at the Meritt website noting that “documents” have been submitted to the USPTO.
It should be noted that the minimum legal documents were submitted to protect the secrecy of this design. The buyer is strongly advised to retain a licensed patent attorney to submit additional legal documents to insure maximum protection for this technology. The buyer understands that from the date of purchase, all future funding for engineering, technology development, legal protection or representation, and any other resource supporting this technology, prototype motor, and/or project is the responsibility of the buyer.
Intellectual property traditionally takes the form of either patent, copyright, trademark, or trade-secret protection. Often, a business may protect a single technology with multiple IP types. For example, a new electronic gadget may have patents on its core technology and implementations, copyrights on particular computer code used in the gadget, trademarks on the look and feel of the gadget, trade-secrets on the manufacturing process and other implementation particulars that may not be patentable, and integrated circuit topography protection for the IC layout.
Karl Lenz introduced some of these ideas in his arguments that patents on software should be banned. However, this protection overlay is a reality that inventors and businesses can use to their advantage.
