Jorda on : Exploitation of the Overlap Between Patents and Trade Secrets is Paramount

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At this point I should make it unequivocally clear that my position is not that trade secrets should be embraced in favor of patents, nor is it my intention to denigrate patents in any way by embracing trade secrets over patents. What I have practiced in my career and what I endorse as the best policy and practice is to obtain patents as center of gravity in an intellectual property portfolio and maintain trade secrets as underpinnings for patents to protect unpatentable collateral know-how and show-how. Books, articles and presentations on intellectual property rights almost always, even nowadays, speak to patents, copyrights and trademarks as discreet subjects and with scant coverage of trade secrets. However, doing so overlooks the fact that legal protection of innovation of any kind, especially in high-tech fields, requires the use of more than one intellectual property category. This results in integration of intellectual property rights for dual, triple or multiple protection.

Professor Jay Dratler in his 1991 pioneering work Intellectual Property Law: Commercial, Creative, and Industrial Property , was the first one to “tie all the fields of IP together.” According to him, from former fragmentation by specialties, IP rights are now a “seamless web,” due to progress in technology and commerce. In 1996, Stephen Elias published Patent, Copyright and Trademark, A Desk Reference to Intellectual Property Law with a Guide to Use Intellectual Property Protections . His “guide” lists 119 “Creative Work” categories and the “Applicable Rights” for each category, which shows that in the vast majority of cases dual or triple protection obtains. Lastly, in 1997 the authors (Professors Merges, Merrell, Lemly and Jorde) of Intellectual Property in the New Technological Age also avoid the fragmented coverage by approaching intellectual property as a unified whole and concentrate on the interaction between different types of intellectual property rights. Thus, we now have a unified theory in the intellectual property world, a single field of law with subsets and significant overlap between intellectual property fields. Several intellectual property rights are available for the same intellectual property or different aspects of the same intellectual property. Not taking advantage of the overlap misses opportunities or, worse, amounts to “malpractice,” according to Professor Dratler. Especially for high-tech products, trademarks and copyrights can supplement patents, trade secrets and mask works for the products’ technological content. One intellectual property species, often patents, may be the center of gravity and more important than others. Other intellectual property species are then supplementary but very valuable to: • cover additional subject matter, • strengthen exclusivity, • invoke additional remedies in litigation, • standup if a primary intellectual property right becomes invalid and thus provide synergy and optimize legal protection. Professor Dratler gives the following illustrations: a) Multiple protection for a data processing system can involve: • patented hardware and software • patented computer architecture on circuit designs • trade secrecy for production processes • copyrighted microcode • copyrighted operating system • copyrighted instruction manual • semiconductor chips protected as mask works • consoles or keyboards protected by design patents • or as trade dress under trademark principles • trademark registration b) Multiple protection in biotech for a diagnostic kit involving monoclonal antibodies: • product patent on the test kit • process patent on the preparation of the antibodies • trade secrecy for production know-how • copyright for test kit’s instructions • trademark In my view, even these illustrations don’t go far enough, because trade secrets serve not only for protection of production processes and know-how, but can also protect the volumes of collateral data, information and know-how on other aspects of patented products, which are not found in patent specifications. Other solid examples: c) Multiple protection of aesthetic designs: • design patent • copyright for separable features • trademark for non-functional features • trade dress for over-all appearance • utility patent for functional features • trade secrets for collateral and collateral know-how and data d) Multiple protection for plants and plant parts: • plant patents • plant variety protection certificates • utility patents • trade secrets To drive home the intellectual property integration concept, I use, as do other practitioners, the following catch phrases: • exploit the overlap • develop a fall back position • create a web of rights • build an IP estate • build a wall • build a ringfence (India) • overprotect • lay a minefield for synergistic effects via multiple protection. The most important, albeit most disputed, intellectual property management policy and strategy, is exploitation of the overlap between patents and trade secrets. There is of course no argument whatsoever about coexistence and compatibility of patents and trademarks. There is likewise no controversy whatsoever about franchise agreements which cover trademarks and trade secrets (and often also patents) and constitute a huge category of hybrid license agreements.

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This page contains a single entry by Jon Cavicchi published on November 8, 2007 8:00 AM.

Jorda on : Trade Secrets Have Special Attributes was the previous entry in this blog.

Jorda on : Initial Patent/Trade Secret Evaluation Guide is the next entry in this blog.

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