Choosing Between Patent and Trade Secret Protection To Protect Your Intellectual Property.

In some cases, trade secret protection of an invention is a viable alternative to patent protection. A trade secret is information, including a formula, pattern, compilation, program, device, method, technique, or process, that derives independent economic value from not being generally known to or readily ascertainable to others who might obtain economic value from its disclosure or use.

In order to maintain its value, a trade secret owner must take precautions to prevent disclosure of the secret information. Conversely, patent protection requires the inventor to provide detailed information about the invention in order to be granted the right to exclude others from making, using, or selling the invention for a specific period of time.

The two types of intellectual property also have a number of other key differences:

  • Process for protection: Unlike patents, trade secrets cannot be federally protected through applications to the U.S. Patent and Trademark Office. Rather, the owner of the trade secret holds the responsibility for keeping it safe. If the holder fails to maintain secrecy or if the information is independently discovered or otherwise becomes pubic knowledge, protection as a trade secret is lost.
  • Range of protection: U.S. patent law limits the scope of patent protection to include any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof. A trade secret can include any of the various types of information referenced above such as customer lists.
  • Timeframe for protection: Trade secret protection can begin at any stage of the inventing process, while patent protection must comply with deadlines established under federal patent law.
  • Limitations of protection: Patents granted by the USPTO are limited to the United States, unless the inventor takes further steps to gain international protection. So long as the information remains confidential, trade secret protection can extend globally.
  • Term of protection: While patents have a specific term of years, trade secret protection does not expire. However, trade secrets can be discovered through independent discovery and reverse engineering.

How Can I Help?

Given the significant differences, choosing the most beneficial type of protection involves careful consideration of both the business and legal implications. For assistance, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

The Difference Between Patent And Trade Secret Protection.

In some cases, trade secret protection of an invention is a viable alternative to patent protection. A trade secret is information, including a formula, pattern, compilation, program, device, method, technique, or process, that derives independent economic value from not being generally known to or readily ascertainable to others who might obtain economic value from its disclosure or use.

In order to maintain its value, a trade secret owner must take precautions to prevent disclosure of the secret information. Conversely, patent protection requires the inventor to provide detailed information about the invention in order to be granted the right to exclude others from making, using, or selling the invention for a specific period of time.

The two types of intellectual property also have a number of other key differences:

  • Process for protection: Unlike patents, trade secrets cannot be federally protected through applications to the U.S. Patent and Trademark Office. Rather, the owner of the trade secret holds the responsibility for keeping it safe. If the holder fails to maintain secrecy or if the information is independently discovered or otherwise becomes pubic knowledge, protection as a trade secret is lost.
  • Range of protection: U.S. patent law limits the scope of patent protection to include any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof. A trade secret can include any of the various types of information referenced above such as customer lists.
  • Timeframe for protection: Trade secret protection can begin at any stage of the inventing process, while patent protection must comply with deadlines established under federal patent law.
  • Limitations of protection: Patents granted by the USPTO are limited to the United States, unless the inventor takes further steps to gain international protection. So long as the information remains confidential, trade secret protection can extend globally.
  • Term of protection: While patents have a specific term of years, trade secret protection does not expire. However, trade secrets can be discovered through independent discovery and reverse engineering.

How Can I Help?

Given the significant differences, choosing the most beneficial type of protection involves careful consideration of both the business and legal implications, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

An Inside Job.

A new study suggests that cyberattacks may not be the greatest threat to the trade secrets of U.S. companies. Rather, many thefts are an inside job.

According to Symantec, its recent survey found that half of employees who left or lost their jobs in the last 12 months walked out the door with confidential business data. Moreover, 40 percent plan to use the information in their new endeavors.

Perhaps most alarming among all of the survey findings—most employees do not believe that using competitive data taken from a previous employer is wrong. In fact, fifty-six percent of employees do not believe it is a crime to use a competitor’s trade secret information.

Here  are a few other key findings:

  • Sixty-two percent say it is acceptable to transfer work documents to personal computers, tablets, smartphones or online file sharing applications. The majority never delete the data they’ve moved because they do not see any harm in keeping it.
  • Forty-four percent of employees believe a software developer who develops source code for a company has some ownership in his or her work and inventions, and 42 percent do not think it’s a crime to reuse the source code, without permission, in projects for other companies.
  • Only 38 percent of employees say their manager views data protection as a business priority, and 51 percent think it is acceptable to take corporate data because their company does not strictly enforce policies.

As this survey highlights, employees’ attitudes surrounding trade secrets and other valuable intellectual property often stand in stark contrast to the policies many companies seek to promote. So, it is not only important to have confidentiality policies and non-disclosure agreements in place, but also to make sure that employees understand what they mean.

How Can I Help?

For additional information about safeguarding your company’s valuable intellectual property, contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

Tougher Trade Secret Penalties.

While trade secret theft is generally addressed through civil suits, criminal punishment is increasingly being used as a deterrent by the federal government.

The Economic Espionage Act of 1996 criminalizes trade secret theft committed for personal benefit within the country or for the benefit of a foreign government. Two recent amendments to the law will broaden the government’s ability to prosecute these cases and impose tougher penalties.

The Theft of Trade Secrets Clarification Act of 2012 clarifies the scope of the Economic Espionage Act of 1996 in light of U.S. v. Aleynikov, 676 F.3d 71 (2d Cir. 2012). In that case, the Second Circuit Court of Appeals overturned the criminal conviction of a programmer who stole the source code of his employer to establish a competing firm. The court held that the computer code failed to satisfy the statute’s requirement that the “product” was “produced for” or “placed in” interstate or foreign commerce. Under the amendment, which was signed into law by President Obama in December, the prohibition against the theft of trade secrets will now apply to a trade secret that is related to a product or service used in or intended for use in interstate or foreign commerce.

The Foreign and Economic Espionage Penalty Enhancement Act of 2012 will enhance the penalties for misappropriating trade secrets to benefit a foreign government. For individual offenders, the monetary limit for financial penalties would increase from $500,000 to $5,000,000. For corporations, it would increase from $10,000,000 to the greater of $10,000,000 or 3 times the value of the stolen trade secret to the organization, including expenses for research and design and other costs of reproducing the trade secret that the organization has thereby avoided. The legislation was passed by Congress and is now awaiting the President’s signature.

we encourage you to contact one of our experienced intellectual property attorneys for a free 30-minute consultation.

How Can I Help?

As these new laws highlight, it is imperative for businesses to carefully guard all proprietary information and make sure that all employees understand what constitutes a protected trade secret. For more information about how to best protect your trade secrets, contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

When Does Trade Secret Theft Become a Federal Crime?

Trade secret theft is generally addressed through the civil lawsuits. However, in some cases, the misappropriation of trade secrets can rise to the level of a federal crime. The Economic Espionage Act of 1996 criminalizes trade secret theft committed for personal benefit within the country or for the benefit of a foreign government.

Section 1831 addresses foreign economic espionage and requires that the theft of a trade secret be done to benefit a foreign government, instrumentality, or agent.  The elements of the crime include:

  • The defendant intended or knew his actions would benefit a foreign government, foreign instrumentality, or foreign agent;
  • The defendant knowingly received, bought, or possessed a trade secret, knowing the same to have been stolen or appropriated, obtained, or converted without authorization; and
  • The item/information was, in fact, a trade secret.

Meanwhile, Section 1832 involves the misappropriation of a trade secret with the intent to convert the trade secret to the economic benefit of anyone other than the owner and to injure the owner of the trade secret. The elements of the crime include:

  • The defendant intended to convert a trade secret to the economic benefit of anyone other than the owner;
  • The defendant knowingly received, bought, or possessed a trade secret, knowing the same to have been stolen or appropriated, obtained, or converted without authorization;
  • The item/information was, in fact, a trade secret;
  • The defendant intended, or knew, the offense would injure the owner of the trade secret; and
  • The trade secret was related to or included in a product that is produced for or placed in interstate or foreign commerce.

Of course, prosecutors will not pursue every case that meets the above criteria. As detailed by the Department of Justice, U.S. Attorneys will evaluate evidence of involvement by foreign agents, the type of trade secret involved, the degree of economic injury, the effectiveness of civil remedies, and the potential deterrent value before deciding whether to bring a criminal action.

How Can I Help?

Protecting against trade secret misappropriation should not just be an important priority for the federal government, but for all businesses. To make sure you are protected, please contact me for a free 30 minute consultation by sending me an email or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities.  Connect with me on Google +

Norman

Raytheon’s Second Chance Trade Secrets Case

Raytheon Co. will have another opportunity to pursue an intellectual property lawsuit against Flir Systems Inc. Raytheon alleges that the company’s Indigo Systems unit stole trade secrets regarding its infrared technology.

In 2004, Raytheon obtained an Indigo infrared camera and, after disassembling it, “found what it believed was evidence of patent infringement and trade secret misappropriation,” according to court documents. The suit was filed in 2007, within the three-year statute of limitations.

However, a federal court in Texas dismissed the case after determining that Raytheon waited too long to file its complaint. It found that Raytheon should have suspected the theft as early as 2000 when key employees left Raytheon for Indigo and Indigo started to win key defense contracts.

In a recent ruling, the U.S. Court of Appeals for the Federal Circuit disagreed, finding the lower court erred in dismissing the case. “It was for the jury and not for the district court to determine when Raytheon should have first discovered the facts supporting its cause of action,” the opinion stated.

The appellate panel further noted that the lower court placed too high a burden on Raytheon. “The district court essentially concluded that from 2000 on, Raytheon was on permanent inquiry notice and therefore had a constant duty to investigate all acts of competition by Indigo for evidence of misappropriation,” the panel wrote.

The decision allows Raytheon to pursue its claims for theft of trade secrets and misappropriation of intellectual property.

How Can I Help?

If you need help to keep your secrets or determining how best to protect your ideas, or know someone that can use my help, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities.  Connect with me on Google +

Norman