Select Page

University of Cincinnati School of Law
Acheson, Edwin R.

Tuesday, December 01, 2009
9:00 PM
I. Trade Secret
A. it is improper to obtain knowledge of a trade secret without spending the time and money to discover it independently unless the holder voluntarily discloses it or fails to take reasonable precautions to ensure its secrecy.
B. RULE: Trade secret:
1. Have to have something that is not generally known or easily ascertainable to the industry.
i. Reasonable steps to maintain secrecy.
a. Have to look at time, place, and circumstance
2. Key is take steps that are reasonable to protect the trade secret.
i. Depends on the secret (Coke need a guard) other places need only a locked door.
3. Once the information is out then you lose your protection.
4. It is not misappropriation to go through a competitors trash.
A. Novelty §102
1. Requirements of novelty are expressed in §§ 102(a)(e)(g)
i. Keyed to the “invention date”.
2. §§102(b)(d) are statutory bars
i. Keyed to “filing date”
3. 102(c) abanding the rights to the invention, dedicate something to the world.
B. Unknown properties
1. Titanium Metals Corp. of America v. Banner
i. Taking a narrower range of something that is broadly patented is allowable if the applicant can demonstrate that the claimed subpart has improved or distinct properties over other members of the prior art genus.
a. Cant be merely complementary or in addition to previous uses look for total incompatible and inconsistent with previous uses.
ii. It does not matter that inventor A found a new use for inventor B’s invention.
C. Four corners note:
1. Every limitation of a invalidating reference has to be specifically found on a single document to invalidate a claim on your patent under § 102
2. If you need more than one reference then it is obviousness under § 103
D. Inherency
1. If a prior art reference is silent to a specific feature of an invention then it is determined by what one skilled in the art would discern from the disclosed information.
III. Statutory Bar
A. Critical date: is the date that is one year prior to the date of filing a U.S. patent application. Considered critical because it triggers statutory bars. (102 b, d)
B. Introduction
1. What is public use under § 102(b)

Informing use


Secret Use

Inventor applicant

Yes (Pennock)

Yes(public does not have access to)(Egbert)

Yes (metallizing)

3rd party

Yes (Electronic storage battery)

Yes, Abbott

No, Gore

ii. Informing use once invention is in use in public
iii. Non‐informing use
a. Software that is on a CD that people cannot decompile to see what is going on.
b. Anti‐gravity paint is non‐informing

c. An inventor who gives or sells a device without limitation or restriction or injunction of secrecy, and it is used, the invention
has been placed in “public use,” 1) It does not matter that it was publically used where people could not see it.
iv. Secret use
a. Use that is not public, factory or an area where you exclude people
b. If inventor is aware of secret use by third party, this can be prior art against him but not other inventors (Oddz On)
v. Inventor v. 3rd party
a. Question is where did the invention come from
b. Inventor ‐>A ‐>B ‐> Z Z’s use is inventor (because source is the inventor)
c. To be a 3rd party invention has to have a separate source outside the inventor

C. Applicant Activities § 102(b)
1. “Public Use”
i. Egbert v. Lippman
a. lf an inventor gives or sells a device to another without limitation or restriction, or injunction or secrecy, and it is used, such use is public and places the invention “in public use.”
i) It

n descriptions of the invention exist that are sufficiently specific to enable a person having ordinary skill in the art to practice the invention.
b. Offer to sale the patent rights, title, and interest in an invention is not an offer for sale.
c. Related parties ‐The “on sale” bar of § 102(b) does not arise simply because the intended customer was participating in

development and testing. 1) Was there a need for testing by one other than the patentee 2) What was the amount of control exercised 3) The stage of development of the invention 4) Were there payments made 5) Was confidentiality required 6) Were technological changes made
All factors have to be weighed.
D. Third Party activities § 102(b)
1. Informing use
a. A third party’s innocent use of an invention in its factory to create a commercial product is a “public use” under § 102(b).
b. Prior public use one year prior to an application for a patent renders a patent invalid. Experimental use is not public use, but the unhidden use of a machine in a factory process to produce commercial products for profit is a public use.

1) Rationale: ln this case, the machine, process, and product were not hidden from employees in Electric Storage’s (D) plant and no efforts were made to conceal them from anyone who may have had a legitimate interest.
2. Non‐Informing uses
a. It does not matter if one knows what the product is, the only thing that matters is if there is an offer for sale.
b. A patent is invalid if the invention was on sale in the United States more than one year prior to the date of the application

for the patent in the United States. 1) The invention must both be the subject of a commercial sale or offer for sale and be ready for patenting. (PFAFF)
c. Rationale: The fact that the claimed material was sold under circumstances in which no question existed that it was useful