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Intellectual Property and Technology
University of Dayton School of Law
Lech, Robert

Intellectual Property Outline
 
WHY IP IS DIFFERENT FROM PROPERTY
IP can be used by more than one person without diminishing its knowledge
Usually not tangible, but embodied in something tangible
IP is like a radio station everybody can tune in, a car can only be driven by one person
 
WHAT IS THE PURPOSE FOR IP LAWS
Encourage innovation
Article 1 section 8 of the Constitution: “ to promote the progress of science and the useful arts.”
 
TRADE SECRET PROTECTION
–         Not federal, but state by state
–         Strong until it breaks
–         Damages
o       Injunction, damages, profits of the misappropriater
o       Functions more like tort law than property law
§         b/c it is more of an injury
–         Definition
o       Any formula, pattern, device or compilation of information which is used in one’s business and which gives him the opportunity to obtain an advantage over competitors who do not know it or use it.
–         3 THINGS NECESSARY TO BRING A TRADE SECRET ACTION
o       Secrecy
§         Reasonable efforts
o       Proper subject matter
o       Misappropriation
 
CASES
Defining subject matter appropriate for TS protection
a. Metallurgical Industries – customized furnace case
                                                               i.      Development costs
                                                             ii.      Economic value
                                                            iii.      Advantage over competitors
Defining reasonable efforts of security for TS protection
a. Rockwell Graphics – printing press case
                                                               i.      Plans were locked in a safe, in a locked room
1.      given to vendors to make parts
a.       necessary in order to get cheapest price
                                                             ii.      Employees have some access- one fired for stealing
b. Found to have used reasonable efforts – probably a balancing test b/n necessary business disclosures and security
How can TS be disclosed
a. Disgruntled employee
b. Published through patent issuance
                                                               i.      Not just by TS holder but other person who has knowledge
                                                             ii.      Possible to have patent, copyright and TS protection together
c. Reverse engineering
Misappropriation
a. I

    Should have made customers sign something that wouldn’t allow them to give away info
d. Departing employees
                                                               i.      Court must balance employee’s mobility against importance to employer
                                                             ii.      Was there a confidential relationship
                                                            iii.      Did employee acquire info on the job or did he bring it with him
                                                           iv.      When does an employee have a duty to assign invention
1.      when hired to invent
2.      shop right- invent on employer’s time
                                                             v.      Must be completely independent for employee to own
                                                           vi.      Wexler v. Greenberg – chief chemist leaves company
1.      Employer must show
Legally protectable TS