Academic

RETIREMENT: THE FINAL FRONTIER

Posted on July 08, 2009
Upon his transition to Emeritus Professor, Karl Jorda will no longer add new blogs. Pierce Law has decided to leave this blog up as a definitive source for the discussion on the complementariness of trade secrets and patents. Professor Jorda's thinking on this topic culminated in the article: Washburn Law Journal Fall 2008 The Foulston Siefkin Lecture PATENT AND TRADE SECRET COMPLEMENTARINESS: AN UNSUSPECTED SYNERGY Karl F...

The Trade Secret Owner Has de Facto Prior User Rights -- No. 23

Posted on October 09, 2008
It is often alleged that trade secrets provide weaker protection as they are fraught with serious disadvantages.  Indeed, independent discovery and reverse engineering are defenses against trade secret misappropriation charges and leakage is a constant threat...

Exemplary Cases Prove The Compatibility of Patents and Trade Secrets -- No. 22

Posted on October 02, 2008
The industrial diamond process technology of General Electric Corporation (GE) and the Wyeth v. Natural Biologics and C&F Packing v. IBP and Pizza Hut decisions are excellent illustrations of the synergistic integration of patents and trade secrets for securing invulnerable exclusivity...

Trade Secrets and the "Best Mode" Requirement -- No. 21

Posted on September 30, 2008
In Trade Secret Blogs Nos. 15 and 19, I asserted briefly but categorically that the "Best Mode" requirement of the Patent Statute is no impediment to the coexistence of patents and trade secrets, because this requirement is a very narrow and subjective one as it applies only at the time of filing, only to the knowledge of the inventor(s) and only to the claimed invention...

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Federalizing Trade Secret Law: A Cause Whose Time Has Come/Patent/Trade Secret Complementariness -- No. 20

Posted on September 18, 2008
In the U.S. we have civil causes of action under federal law for infringement of patents, copyrights and trademarks. Alas, we do not have a federal civil cause of action for trade secret misappropriation! But we need one badly! According to Mark Halligan, the main reason for the "step-child treatment of trade secrets" is the fact that "trade secrets did not find a solid home in intellectual property law" as a property right until the seminal Supreme Court decisions in Kewanee Oil Co...

Patent/Trade Secret Complementariness ? No. 19

Posted on April 23, 2008
In prior blogs I railed aplenty about the many misconceptions about the patent/trade secret interface and the deep-seated belief that patents and trade secrets are incompatible.A typical, illustrative and specific sample of such misperceptions comes from “The Trade Secret Handbook — Protecting Your Franchise System’s Competitive Advantage” by Michael Lockerby, American Bar Association, 2000...

More survey results regarding the value of trade secrets as compared to patents: Patent/Trade Secret Complementariness No. 18

Posted on April 01, 2008
In the last blog I recited extensive findings from a 2003 IPO survey to the effect that 88% of the corporate respondents considered trade secrets as their really important intellectual assets.  Interestingly, Dennis Crouch in his March 12 blog, offers a summarization written by James Bessen and Michael Meurer of their recent book Patent Failure...

2003 IPO Survey Results: Patent/Trade Secret Complementariness No. 17

Posted on March 14, 2008
In an earlier blog I referred to the 2003 Survey of the Intellectual Property Owners on Strategic Management of Intellectual Property and related that the results showed, according to 88% of the responses, that the really important intellectual assets are skills and knowledge which implicates trade secrets...

The Putative ?Differences? Between Patents & Trade Secrets Supposedly Determining the Choice Between Them Are Not There: Patent/Trade Secret Complementariness No. 16

Posted on March 06, 2008
In the past — and even today — if trade secrecy was contemplated at all, for example for manufacturing process technology, which can be secreted unlike gadgets or machinery, which can be reverse-engineered, the question always was phrased in the alternative...

Trade Secrets and the Best Mode Requirement: Patent/Trade Secret Complimentariness No. 12

Posted on February 15, 2008
Anent the subject of Patent/Trade Secret complementariness, the best-mode requirement is a big bugaboo, based on the colossal misconception that patents and trade secrets are completely incompatible because of the best-mode requirement. In fact, there is nothing wrong with obtaining patent protection for a patentable invention and maintaining trade secret protection for the volumes of associated or collateral knowledge and know-how which is not contained in the patent specification after disclosing the ?best mode,? whatever it may be at the time of filing when only embryonic R&D data may be available...

Are trade secrets nothing but ?baby patents??

Posted on January 18, 2008
Are trade secrets nothing but “baby patents”? After incredibly derogatory and defamatory statements about trade secrets, which I have heard in the past, such as, “trade secrets don’t have a single redeeming virtue” from a corporate chief IP counsel and “trade secrets are the cesspool of the patent system” from a Washington, DC IP professor, comes the dismissive statement that trade secrets are nothing but “baby patents”...

Are trade secrets nothing but ?baby patents??

Posted on January 07, 2008
Are trade secrets nothing but ?baby patents?? After incredibly derogatory and defamatory statements about trade secrets, which I have heard in the past, such as, ?trade secrets don?t have a single redeeming virtue? from a corporate chief IP counsel and ?trade secrets are the cesspool of the patent system? from a Washington, DC IP professor, comes the dismissive statement that trade secrets are nothing but ?baby patents?...

Protection of Software via Patents and Trade Secrets

Posted on December 07, 2007
This past Monday, December 3, 2007, I gave a talk in Cartagena, Colombia on the Patent/Trade Secret interface in the protection of software. I was invited to do so by ASIPI (Interamerican Association of Intellectual Property) at their XIII Work Sessions and Administrative Council Meeting, held in Cartagena on November 30 to December 5...

Jorda on : Initial Patent/Trade Secret Evaluation Guide

Posted on November 15, 2007
A reoccurring question in intellectual property management involves the initial election between seeking patent protection on a given development and attempting to maintain trade secrecy in that development. To facilitate this initial election and to determine the center of gravity (often patents for products and trade secrets for processes), I developed the following ?Initial Patent/Trade Secret Evaluation Questionnaire...

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

Posted on November 08, 2007
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...

Jorda on : Trade Secrets Have Special Attributes

Posted on November 01, 2007
From the definitions of trade secrets given earlier, the following salient characteristics of trade secrets can be perceived. There is no subject matter or term limitation, nor is there a registration requirement and, in fact, there is not even a tangibility requirement...

Jorda on: Trade Secrets Have a Long History

Posted on October 25, 2007
Trade secret law is the oldest form of IP protection, and already in Roman times the law afforded relief against a person who induced another’s employee (slave) to divulge secrets relating to the master’s commercial affairs. Trade secrecy was practiced extensively in the European guilds in the Middle Ages and beyond...

Jorda on: Trade Secrets are Not Secrets

Posted on October 18, 2007
It is a serious misconception that it is reprehensible to keep inventions secret, inasmuch as this supposedly flies in the face of the patent system, the essence of which is disclosure of inventions for the benefit of the public. However, in light of the decision in Dunlop Holdings v...

Jorda on : Terminology Misconceptions

Posted on October 08, 2007
After reciting the trade secret definitions, a word about nomenclature and terminology associated with the usage of the terms “know-how” and “trade secret” is quite germane to clear up semantic confusion. While the key requirement of a trade secret is secrecy, definitions of “know-how” are completely silent on secrecy as can be seen from the following definitions: Know-how...

Jorda on : What is and What is not a Trade Secret

Posted on October 05, 2007
From the definitions recited before, it is possible to glean what is a trade secret and what is not a trade secret. On a primal level a trade secret is simply information and knowledge. More specifically, it is any proprietary technical or business information, often embodied in inventions, know-how and show-how...

Jorda on : Definition of a Trade Secret

Posted on October 02, 2007
There are three common threads in all trade secret definitions. They are three requirements that must be met for enforceable trade secrets to exist. The information must be a secret in the sense that it is not generally known in the trade, valuable vis-à-vis the competition that does not possess it and the subject of reasonable efforts to safeguard and maintain secrecy...

Jorda on: The Criticality of Trade Secrets in Technology Licensing and Tech Transfer

Posted on September 28, 2007
[A]nent the criticality of Trade Secrets in technology licensing (also in franchising), let’s be mindful that over 80% of technology licenses cover Trade Secrets or are hybrid licenses covering Patents and Trade Secrets. Furthermore, it is indisputable that licenses under Patents without access to the associated or collateral know-how are often insufficient to practice the patented technology commercially...

No trade secret : Jorda in the Hall of Fame

Posted on September 28, 2007
Congratulations to Professor Karl F. Jorda, one of nine individuals to be selected for induction into the Intellectual Property Hall of Fame. He was recently chosen from a field of over 300 nominations solicited from members of the global intellectual property community...

Free Copy of Jorda Chapter on Trade Secrets from the PIPRA Handbook

Posted on September 25, 2007
The IP Handbook is a comprehensive resource on current IP management issues and approaches. The book offers information and strategies for utilizing the power of both IP and the public domain for a diverse audience including policy makers, technology transfer professionals, licensing executives, and scientists...

Jorda on: The Complementariness of Patents and Trade Secrets

Posted on September 24, 2007
Regarding the Patent/Trade Secret interface, let’s keep in mind that all Patents are born as Trade Secrets, and that Trade Secrets also accompany Patents and outlast Patents. Patents and Trade Secrets are not mutually exclusive, but highly complementary and mutually reinforcing...

Jorda on: The Importance of Trade Secrets

Posted on September 17, 2007
I would now like to share my conclusions about Trade Secrets, and thereby dispel some serious misconceptions about them that still linger and lurk around but should be eradicated once and for all. My views would strike you as iconoclastic, if not heretical, should you believe, as does a noted professor in Washington, that Trade Secrets are the “cesspool of the patent system...

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