Intellectual Property Outline

I. Analysis
a. Has the Plaintiff established Intellectual Property rights?
i. What is the relevant law?
ii. What are the requirements for protection?
iii. How long does the protection last?
b. What has the Defendant done?
c. Defenses
d. Remedies

TRADE SECRETS CHECKLIST
Establishing the Right
A Trade Secret is protectable when
· (1) The information is secret
· (2) The information is valuable, and
· (3) The holder took reasonable efforts to maintain information’s secrecy
(See Restatement of Torts §§757 Comment b, Restatement (Third) of Unfair Competition §39, California Civil Code §3426, and Uniform Trade Secrets Act §1)
Secret and Valuable when:
· Information qualifies for protection if it has economic value, is not generally known, and not readily ascertainable by proper means (under Uniform Trade Secrets Act §1)
§ See Rohm & Haas- pg 1
· Factors (from the Restatement of Torts §757)
§ Extent to which the information is known outside claimant’s business
§ Extent to which information is known by employees or others involved in the business
§ Extent of measures to guard secrecy of the information
§ Value of the information to the business and its competitors
§ Amount of effort or money expended in developing the information
§ Ease or difficulty with which the information could have been properly acquired or duplicated by others
Reasonable Efforts to Maintain Secrecy
· See Rockwell Graphic – pg 2
· Limited disclosure to further economic interests is allowed (See Metallurgical) – pg 2
· Not taken when the information about products and operations is allowed to flow freely to competitors at one time and later claimed to have been wrongfully acquired by competitors
· Taken when firms employ
§ Confidentiality agreements
§ Confidential relationships
§ Physical security measures
§ Design products to protect against reverse engineering
§ Stamp “confidential” on documents
§ No public Disclosure
· Examples of Disclosure:
o Publication of Secret
o Sale of Commercial product that embodies secret
o Public disclosure by others
o Inadvertent disclosure
o Disclosure compelled by government agencies
Enforcing the Right
A trade secret is Misappropriated when
· (a) The trade secret is acquired by improper means OR
· (b) The trade secret is acquired through the breach of a confidential relationship
(See Restatement of Torts §757, Restatement (Third) of Unfair Competition §40, and Uniform Trade Secrets Act §1)
Improper Means
· Physical force, stealing, wrongful conduct, or other means even if doesn’t cause harm (See Restatement of Torts §757, Comment f)
· Theft, fraud, unauthorized interception of communications, inducement, knowing breach of confidence, other means (See Restatement (Third) of Unfair Competition §43)
· Theft, bribery, misrepresentation, breach or inducement of breach of secrecy, espionage, other means (See Uniform Trade Secrets Act §1)
· Unfair behavior of industrial espionage that could not be protected against (See E.I. DuPont)- pg 3
Confidential Relationship when
· Nature of the relationship, amount and quality of the disclosure (See Smith v. Dravo)- pg 3
· Knowledge of a special relationship (See Bateman)- pg 3
· Employer-Employee Relationship
§ Employee mobility can prevent the finding of a confidential relationship (See Wexler)- pg 4
§ Inevitable disclosure doctrine (See Pepsi)- pg 4
§ Assignment
§ Hired to Invent
· Hired to invent?
· Invented on employer’s time or with employer’s resources?
· Independent invention outside field of employment?
· Established if (under Restatement (Third) of Unfair Competition)
§ Express Contract or
· (a) Express promise of confidentiality made prior to disclosure
§ Implied Contract
· (b) Disclosure under circumstances and facts that justify
o (1) Person knew or had reason to know that disclosure intended to be in confidence
o (2) Party reasonable in inferring person consented to confidentiality
Defenses
Independent Discovery
Reverse Engineering
· Not improper and without a duty to disclose, there is no appropriation (See Chicago Lock)- pg 5
Observation of product in public
Obtaining information in public
Statute of Limitations

II. Analysis
a. Has the Plaintiff established Intellectual Property rights?
i. What is the relevant law?
ii. What are the requirements for protection?
iii. How long does the protection last?
b. What has the Defendant done?
c. Defenses
d. Remedies

PATENTS CHECKLIST
Establishing the Right
Elements of Patentability
· Subject Matter
· Utility
· Novelty
· Nonobviousness
· Specification
§ Written Description
§ Enablement
§ Best Mode
Patentable Subject Matter (See 35 U.S.C. §101)
· Process
· Machine
· Manufacture
· Composition of Matter
· Genetically engineered bacteria not found in nature (See Chakrabarty)- pg 2
· Process that creates something identically found in nature
· Purifying compound to create “new thing commercially and therapeutically” (See Parke-Davis)- pg 2
· Business Method if produces “useful, concrete, and tangible result” (See State Street)- pg 2
· Useful application of a mathematical algorithm
Not Patentable Subject Matter
· Products of Nature (See Funk) – pg 2
· Physical phenomena
· Abstract ideas
· Mathematical formulas or algorithms
· Printed matter
Utility See 35 U.S.C. §101)
· Invention must be operable or capable of fulfilling its described function
· Types
§ General: Capable of any use
§ Specific: capable of intended or invention use and achieves that result
§ Substantial: significant and presently available benefit to the public (See Fischer)- pg 3
· Must have substantial and specific utility (See Fischer), and be practical (See Manson)- pg 3
No Utility
· Only aesthetic or descriptive qualities
Novelty (See 35 U.S.C. §§101, 102)
· Anticipation (under §102(a))
§ Before applicant invented invention
§ Invention was
· Patented anywhere
· Described in a printed publication anywhere
o One obscure printed publication in another country enough to anticipate (See Hall)- pg 4
· Known or Use in the United States
o See Rosaire – pg 4
§ By others
§ Enabled person of ordinary skill in the art to practice the invention
· Anticipation (under §102(b))
§ Critical date: more than one year before the U.S. patent application is filed
§ Invention was
· Patented anywhere
· Described in a printed publication anywhere
· Public Use in U.S.
o If the invention is used for its inventive purpose, even once, this can be enough of a public use (See Egbert)- pg 4
o Experimental Use Exception (See City of Elizabeth)- pg 5
§ Good faith testing of usefulness and durability, even in public
§ Under surveillance of inventor
§ Purposes of testing machine, making improvements
§ Not for allowing others to make, use, or sell invention
· On Sale in U.S.
o Sell or offer to sell
o On sale if (see Pfaff)- pg 5
§ (1) Subject of a commercial offer for sale
§ (2) Ready for patenting (i.e. reduction to practice before the critical date, or proof inventor prepared drawings/description sufficient to enable one skilled in the art to practice invention)
§ By applicant or others
§ Enabled person of ordinary skill in the art to practice invention
· Priority (See 35 U.S.C. §102(g), and Griffith)- pg 5
§ Conception date?
§ Reduction to practice date?
Nonobviousness (See 35 U.S.C. §103)
· Factors (See Graham)- pg 6
§ Scope and content of prior art
§ Differences between prior art and claimed invention
§ Level of ordinary skill in the relevant art
§ Secondary Considerations
· Commercial success
· Failure by others
· Long-felt need
· Copying by others
· Praise for t