You’re talking about this:
Yep. I had thought of that as a “trade secret” issue, but apparently it’s not.
I’d argue it’s intended as a defense against accusations of copyright piracy. The specific examples in the wiki are all examples of circumventing copyright-protected works.
But IMO it would equally work as a defense against accusations of trade secret piracy. e.g.:
We bought some Coca Cola, tasted it, worked up a formula that tasted the same and here it is: LSLCola.
LSLCola doesn’t violate Coke’s trade secrecy rights because we didn’t suborn anyone legitimately in possession of Coke’s secret, nor did we engage in the various forms of prohibited espionage.
At least as I understand it.
As a practical matter, reverse engineering requires access to a high-enough fidelity model of the original. IIRC some of the reverse-engineered knockoffs of MS-DOS ended up failing as products because they hadn’t faithfully duplicated some corner case bugs of the real thing. Which led to reliability problems. And of course which had bugs of their own, not necessarily in the same places as MSDOS with the same consequences.
As to Coke, any 6-pack of the stuff is about as good a prototype as any other 6-pack. Unlike the prohibited aerial photography of the DuPont refinery under construction, Coke can hardly keep the taste secret from the public at large.
As to the OP, in a sense a non-patenting inventing company owns an invention for one year from the time they disclose it outside their veil of secrecy, in the sense that they have that long to file a patent application. For the first year, because the patent is possible (whether or not they’re going to do it), the protection is good like a patent’s protection. Now, to sue for infringement, they would have to apply for a patent, so maybe this doesn’t meet the OP. But it has the deterrent power of a patent for that first year, if others think the company will file an application.
I believe this exact thing has been done; probably multiple times. Years ago I participated in a middle school science fair taste test comparing Coke, Pepsi, and the store brand generic. With everything in identical plastic cups, it was very easy to tell the difference between Coke and Pepsi. Coke and the generic where indistinguishable. Not even my wife, whose blood is probably 28% Coke, could tell the difference. She still buys Coke, such is the power of marketing.
I was under the impression that your “3” preceded “2”. In fact it’s been claimed that 3 was a pretext to do 2 when they reintroduced Coke Classic.
If Company A has a trade secret process that is not patented, but is documented with drawings, memos, etc. it can be deemed as some protection. Say Company B, who also figured out the same or similar process, decides to apply for a patent of this process. Company A can submit confidentially to the patent office, evidence that they also had a prior development of the process that Company B is trying to patent. The US patent office can use this a means to deny the patent to Company B. This would prevent Company B from asserting the patent and then suing Company A for violation and seeking compensation from Company A.
I believe the most recent patent reform in the US removed this protection. Along with first-to-file, demonstration of practicing a trade secret prior to a patent being issued no longer protects a company. At least that’s what my patent lawyer tells me.
Patents are only to be awarded to the inventor “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent.” The operative word is “NEW”. If a patent application isn’t for a necessarily new idea, then it shouldn’t be awarded the patent, for the purpose of seeking out violators to just seek damages. This is supported by numerous rejected patent applications.
You may want to get a new patent lawyer.
Sure, company A can stop B from getting a patent, that way. But that won’t stop B from going ahead and using the technique or making the product.
No- under the current law, I can patent anything I come up with that is not described in “prior art”. Trade secrets, since they are…well, secret, are not prior art. Which means that if Company A is using a trade secret process to manufacture widgets and company B comes up with the same (or largely overlapping) process on its own, it can choose to patent the process rather than treat it as a trade secret.
Under the past first-to-invent patent law, Company A could continue to practice its trade secret and if Company B found out about it, had the defense that it was practicing the process prior to the invention of the process by company B. Under the current law, company A does not have this defense. A claim in a patent meets the “New” requirement if there is no prior art describing it at the time of filing. There is no secret prior art.
There is the on-sale bar. If an invention has been available for sale on the market for a year, it is no longer novel and cannot be protected under patent law.
Yes, though I know it as the “offer for sale” bar date, which also includes just publishing the invention (i.e. in a technical journal or conference proceedings).
I always viewed it as “self prior art”, in that if I am the one putting the invention into the prior art bin, I am given a year to apply for a patent (only in the US, foreign rights generally disappear on the date it is offered for sale). If I miss the deadline, the loss is on me.
The other interesting fact (in my layman’s understanding) is that if the invention is part of a product “offered for sale”, the bar date clock is started, even if the invention is not detectable by the customer.
You might still have a patent for something that isn’t directly for sale, though. If my company comes up with a clever process for making widgets, I can patent that process, or keep it as a trade secret, in addition to any patent I might or might not have on the widgets themselves. It may well be that the widgets made using my process are exactly identical to the widgets other companies make using other processes, but my process lets me do it for cheaper, for instance.
That’s why I used the specific language “part of the product”. The process may be necessary to make the product, but the process is not a part of the product. On the other hand, if the process is necessary to allow use of a proprietary material formula used in the product, since the material ends up in the product, it would have a bar date set, past which you couldn’t patent the material.
If you get a patent on your invention, you have to disclose it, so it can’t be a trade secret.
If you don’t get a patent and try to keep it secret, then you can theoretically try to patent it years later. However there are some considerations:
(1) If the patent is on a product, and you sell or license the product, you are subject to the on-sale bar after one year,
(2) If the patent is on a process or material or something else that goes into the making of the product
—(a) and you license that patent to someone else to produce the product, then you might also be subject to the on-sale bar after one year,
—(b) and you advertise the benefits of the patent as a way of promoting the product, then you might also be subject to the on-sale bar after one year,
—© if you are in a competitive industry and the patent has significant benefits, such as reducing cost or increasing quality, then it’s very likely that your competitors will soon figure out your secret and use it—or even patent it—themselves.
So patent/trade secrets are almost always in tension. You generally have to choose one route or the other. And generally you’re going to choose a trade secret only for things that your competitors are unlikely to develop themselves.
I think you mean “trade secret” instead of patent in a couple of places there. If you have a patent, there is no bar date, because, well, you already have the patent.
I hadn’t considered the sale or licensing of a trade secret as establishing a bar date. I’m not sure what the patent ramifications are if two companies decide to jointly hold a trade secret and one company pays for this arrangement.
If the trade secret is part of a product the scenario reverts back to “offer for sale”, but if the trade secret is part of a process, does the future patenting of the process have a bar date set? It is a question I’ll ask the next time I talk to one of our intellectual property attorneys.
Most trade secrets center around processes and “know how” and can be more valuable than a patent. “Secret formulas” can be reverse engineered, at least from an ingredients standpoint, but the processes that are used to combine the ingredients usually can’t.
When did this come into force? Are you sure? Has it swung back and forth? If I had been forced to guess, I would have said that the law had changed the opposite way:
“Although subject to certain limitations, [23] the prior user rights defense is now sufficiently comprehensive that a decision to use secrecy can be made in the comfort of knowing that the activity will almost certainly not be prohibited by virtue of a later-issued patent.”