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Posts Tagged ‘ABA’

Is Trade Secret Protection Better Than a Patent?

In Patents and Copyrights on August 12, 2010 at 4:55 pm

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R. Mark Halligan has published an excellent article in the American Bar Association’s Landslide.

Since every patent starts out as a trade secret, Mr. Halligan discusses whether, given the trends in patent law, it makes sense for the holder of a trade secret to pursue patent protection.

Patent applications face a Catch-22 in pursuing patents.  By “pursuing patent protection unsuccessfully, the inventor has lost both patent protection and trade secret protection because the business method is now in the public domain. This is the ‘Catch-22’ with any patent application disclosed to the public during the USPTO patent prosecution proceedings in the United States. The moment the patent application is published, any trade secret rights in the patent application are vitiated. Then if the patent does not issue, the inventor has lost all proprietary protection. In hindsight, the inventor would have been better off keeping the commercially valuable information secret if patent protection is uncertain.”

Today patents are harder to get and harder to defend.  Halligan discusses how in light of recent patent law cases, the scale has now tipped in favor of pursuing a trade secrets strategy over pursuing a patent application.  See, e.g., In re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d (BNA) 138 (Fed. Cir. 2008); KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727 (2007); Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997); In re Seagate Tech., LLC, 497 F.3d 1360 (Fed. Cir. 2007).

Mr. Halligan concludes that:

it is now time for the intellectual property bar to revisit the decision whether to protect commercially valuable information as a trade secret asset or a patent asset. In recent years, decisions by the U.S. SupremeCourt and other developments in the law have circumscribed the once broad protection afforded to patent holders as well as remedies available to patent holders. Upon consideration of all the issues discussed in this article, the protection of such assets as trade secrets may provide a better choice for your clients in today’s environment.

By CHARLES H. JUNG

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Protecting Trade Secrets in China is Top Priority for Group of In House Intellectual Property Attorneys

In Conferences, Criminal Theft of Trade Secrets, International on August 11, 2010 at 9:03 pm
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Protecting trade secrets when doing business in developing countries has long been a concern of intellectual property attorneys.  Protecting American trade secrets in China was identified as a top priority amount a group of in-house intellectual property attorneys at a the American Bar Association‘s annual conference which was held at the Moscone Center in San Francisco this morning.

Amy Miller of Legal Pad reported on some perspectives shared at the conference:

Gary Loeb, vice president of intellectual property at Genenetech, Inc., said that during litigation he fights aggressively to keep his company’s secret information confidential. “It’s a battle we take very seriously,” he said. “It’s something that makes our cases very expensive.”

Scott Piering, senior IP lawyer at Cargill, Incorporated, said . . . . [that] Cargill has had less success keeping their trade secrets secret when doing business in China. Dealing with corporate espionage is just the price of doing business there, he said. So his company doesn’t take its best trade secrets to China, but Cargill has taken some calculated risks in the country, and said it’s expected that trade secrets will be stolen. “It keeps me up at night constantly,” he said.

Robert Lindefjeld, general counsel and chief IP counsel for Nantero, Inc., said he hasn’t figured out how to deal with corporate spying in China either. His strategy is to just maintain a strong patent portfolio in China. “I used to file every single patent overseas,” he said. “Now I only file key patents because it’s so expensive.”

You can read the article here.

By CHARLES H. JUNG

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