Patents and Trade Secrets

Overview of Patents and Trade Secrets in the Information Age

4.1 Scope of Patent Protection for Internet Patents

  • Definition of Patent:

    • A patent is a legal right granted by the federal government that excludes others from making, using, marketing, selling, offering for sale, or importing an invention.
    • For a device to be patentable, it must meet three criteria: Novelty, Usefulness, and Non-obviousness.

  • Types of Infringement:

    • Direct Infringement: Occurs when a patented invention is made, used, or sold without permission.
    • Contributory Infringement: Involves providing components for a patented invention used without permission.
    • Literal Infringement: Occurs when the accused product or process falls within the literal wording of the patent claims.
    • Doctrine of Equivalents: Prevents evasion of liability by making trivial changes to the patent claims.

  • Patent Infringement Cases:

    • Markman Hearing: A court procedure to receive evidence about the meaning of the terms used in a patent claim (rooted in the case Markman v. Westview Instruments, Inc.).
    • Appeal Process: Applicants can appeal decisions of the Board of Patent Appeals and Interferences (BPAI) to the U.S. Court of Appeals for the Federal Circuit.

  • Case Study Example:

    • Bid for Position, LLC v. AOL, LLC:
    • Context: Google’s AdWords was analyzed regarding its infringement on a patent for an “Online Auction Bid Management System and Method.”
    • Outcome: The Appeals Court ruled that Google’s AdWords did not infringe on the Bid for Position patent.
4.2 Requirements for Patentability

  • Novelty Requirement:

    • An invention must be new and not known or used by others before the filing date.
    • Prior Art includes any knowledge, usage, patents, and descriptions regarding an invention existing prior to its invention.

  • First to Invent Doctrine:

    • The patent ownership principle where priority is given to the first inventor instead of the first person to file a patent application.
    • Interference Proceedings: Administrative procedures within the USPTO to resolve patent entitlement disputes among multiple inventors.
4.3 Patent Application and Appeals Process
  • Patent Application Process:
    • Patent Prosecution: Refers to the entire process of applying for and negotiating with the patent examiner at the USPTO.
    • Patent Agents: Legal professionals specialized in preparing and prosecuting patent applications; they do not need to be licensed lawyers.
4.4 Protecting Assets as Trade Secrets

  • Definition of Trade Secret:

    • A trade secret includes formulas, processes, devices, or any business information kept confidential to maintain a competitive edge.
    • Trade secrets are governed primarily by state law, notably the Uniform Trade Secrets Act (UTSA).

  • Protective Measures for Trade Secrets:

    • Owners must take reasonable precautions to protect their secrets. These measures may include:
    • Firewalls
    • User Monitoring
    • Encryption
    • Confidentiality Agreements