INTRODUCTION TO INTELLECTUAL PROPERTY

1
INTRODUCTION TO INTELLECTUAL PROPERTY

• CLASS 4
• September 8 2003
• Trade Secrets II

2
QUIZ 1 (Trade Secrets)

• Will be handed out on next Monday (Sept. 15)
• Open book
• Please type
• Exam numbers Academic deans office

3
Elements of Trade Secret Claim

• 1. Subject matter must qualify for trade secrets
  protection (last class)
• 2. Reasonable efforts to protect secrecy
• 3. Misappropriation

4
Reasonable Efforts to Maintain Secrecy

• UTSA 1(4)(2) CB p. 30
• Restatement of Torts factors (CB p. 38)
• BUT see Restatement of Unfair Competition 39
  (CB p. 47)

5
Relevant Factors in determining reasonableness of
efforts to keep secret

• Value of information
• Care taken when disclosing information to others
  who need to know it
• Limits on disclosure of information
• Means taken to maintain confidentiality when
  disclosure is made
• Physical limitations on access

6
Relevant Factors in determining reasonableness of
efforts to keep secret

• Keeping track of copies of information and
  records of those with access?
• Notice to employees and others of restrictions on
  information
• Industry standard and ethics
• Whether an overall security program is in place
• Costs of security measures

7
Why Does Law Require Reasonable Efforts to
Maintain Secrecy?
8
Why Does Law Require Reasonable Efforts to
Maintain Secrecy?

• FAIRNESS THEORY evidence of wrongful act
• PROPERTY THEORY evidence of value of secret

9
PUBLIC DISCLOSURE CAN DESTROY SECRECY
10
PUBLIC DISCLOSURE CAN DESTROY SECRECY

• Publication of issued patent/patent application
• Publication
• Disclosure by third party
• Sale of commercial product
• Accidental disclosure
• Government requirement of disclosure (taking)

11
MISAPPROPRIATION

• 2 kinds
• 1. Disclosure by improper means
• 2. Disclosure that amounts to a breach of
  confidence
• SEE Restatement of Torts 757, UTSA 1(2),
  Restatement (Third) of Unfair Competition 40.

12
Reverse Engineering

• Why is this improper means?