How secret are trade secrets?

[The_Other_Waldo_Pepper]

@ftg

If you try to patent something that’s a trade secret of another company:

1. The other company will at some point try to invalidate your patent on the grounds of prior art. A large company might have someone looking at patent applications or new patents to see if someone is trying to patent something they already know about. If you try to enforce your patent* against some company that’s been using your idea for years, they will definitely fight back. (Patent trolls prefer to go after small companies at first since those companies have less resources to fight back and are more likely to settle.)

Cite? Wiki sez “Information kept secret, for instance, as a trade secret, is not usually prior art, provided that employees and others with access to the information are under a non-disclosure obligation. With such an obligation, the information is typically not regarded as prior art. Therefore, a patent may be granted on an invention, even though someone else already knew of the invention.”

2. Regardless of the patent status, you are completely free to make your product. The other company can’t stop you unless you did something wrong, e.g., got inside info from an employee of the other company.

I figured. But my question was: if I invent something on my own, and legitimately get a patent, what can I do to stop that corporation?

How you know the other company is using your patent idea is another matter. It is also foolish to endanger your patent’s validity. But the other company will have to come clean about their trade secret.

Well, again, I’m envisioning two scenarios: in one, I start selling products built around my patented invention, and they just keep using an identical device on their assembly line – but in the other, they follow my lead and decide to start selling products built around that invention likewise.

So in the latter case, it’s obvious that they’re using my patent idea; they’re peddling it in public. The former case calls for a Don’t-Fight-The-Hypothetical hypothetical, but try this: I patent my device and start selling it – and maybe a year later a disgruntled employee or trespasser or whatever videotapes the company’s assembly-line practices and publicizes (a) how bad working conditions there are, and (b) oh, hey, look at that device churning away in the background.

[Acsenray]

@The_Other_Waldo_Pepper

So in the latter case, it’s obvious that they’re using my patent idea; they’re peddling it in public. The former case calls for a Don’t-Fight-The-Hypothetical hypothetical, but try this: I patent my device and start selling it – and maybe a year later a disgruntled employee or trespasser or whatever videotapes the company’s assembly-line practices and publicizes (a) how bad working conditions there are, and (b) oh, hey, look at that device churning away in the background.

Under the “on-sale bar,” commercial use of an idea for one year makes the idea ineligible for a patent. If the trade secret can be deducted through “examination” of the commercial product, then the one-year on-sale bar applies.

I’ll have to think further what would happen if the trade secret cannot be discovered through examination.

[Nefario]

@Acsenray

Trade secrets are protected by their own set of laws, separate from other kinds of intellectual property.

A trade secret is generally

1. Information
2. Unknown to competitors
3. And generally not easily accessible to the public
4. That gives a commercial advantage
5. And that the owner has taken reasonable steps to protect its disclosure

Not really. Trade secrets are usually protected by nondisclosure agreements signed by employees. They are protected by laws in that if it can be proven that an employee quantified the information and transferred it outside of the company, that employee and the recipient may be sued.

To be “protected by laws” the secret would have to be described as a process, ingredient, or technique and somehow claimed as property of the holder. But by publicy describing this knowledge it would no longer be a secret.

[Acsenray]

@Nefario

Not really.

Actually, yes, really.

47 states of the United States have enacted a form of the Uniform Trade Secrets Act, which defines a trade secret generally as I have described it.

And as of May, with the enactment of the Defend Trade Secrets Act of 2016 we now have a federal trade secrets protection law.

Trade secrets are usually protected by nondisclosure agreements signed by employees. They are protected by laws in that if it can be proven that an employee quantified the information and transferred it outside of the company, that employee and the recipient may be sued.

If you are in a jurisdiction that protects trade secrets solely through such private contracts, then the only remedies for violation would be breach of contract and related actions, perhaps unfair competition-type claims. However, in states that have have a separate trade secrets law, you can bring an action for “misappropriation of trade secrets,” a cause of action not available under contract law.

It really is a separate body of law, separate from contract law, separate from unfair trade practices law, separate from patent law.

Now, the existence of non-disclosure and similar contracts are important to trade secrets law, because generally the holder of the putative trade secret must show that it has taken reasonable steps to protect that secret, and such contracts are a very important way to do that.

[ftg]

@The_Other_Waldo_Pepper

Cite? Wiki sez “Information kept secret, for instance, as a trade secret, is not usually prior art, provided that employees and others with access to the information are under a non-disclosure obligation. With such an obligation, the information is typically not regarded as prior art. Therefore, a patent may be granted on an invention, even though someone else already knew of the invention.”

Thanks for this tidbit. I knew that prior publication and such could be used to established prior art, I didn’t think that documented but secret stuff didn’t count.