Legal Issues Confronting Business in the 21 st Century: Patents, Trade Secrets, And Privacy By:Grant...

Legal Issues Confronting Business in the 21st Century:

Patents, Trade Secrets, And Privacy

By: Grant E. Pollack, Esq.POLLACK, P.C.Technology Attorneys

Copyright © 2015 Pollack, P.C. All Rights Reserved.

What is a Patent?

FUNDAMENTALS


A Patent is a contract between the government and an inventor under which the inventor is granted the right to exclude others from making, using, offering for sale, or selling the invention in the United States or importing the invention into the United States. 35 U.S.C. § 1 et seq.


That Provides…A monopoly for a limited period of time in

exchange for public disclosure of an invention.

CONTRACT


Only a right to exclude

What inventions can be Patented, i.e., by Utility Patent?

New and useful process (or method),Machine,Article of manufacture,Composition of matter, orAny new useful improvement thereof.

(See 35 U.S.C. § 101).


For a Patent to be granted, an invention must be:

Useful – 35 U.S.C. § 101

Novel – 35 U.S.C. § 102

Non-obvious – 35 U.S.C. § 103


PATENTS ARE PUBLIC When a Patent issues, it is in the public domain for all in

the world to see.


…AND SO ARE PENDING PATENT APPLICATIONS

Publish 18 months after filing, are OUT THERE FOR THE WHOLE WORLD TO SEE – even though a Patent has not yet been obtained.

CAN YOU AVOID PUBLICATION?

YES, by filing a Request For Non-Publication at the time you file your U.S. Patent Application.

See 35 U.S.C. § 122(b)(2)(B)(I).

BUT, to keep your Patent Application under a cloak of secrecy, you must forgo filing Patent Applications abroad.


Major Legislative Changes:GATT Implementation Act (1994) - Fundamentally changed the term of a U.S. Utility Patent

from a fixed 17 years to a variable 20 years from the date of filing.

Inventors Protection Act of 1999

- Commenced publication of U.S. Patent Applications.

America Invents Act of 2011 (AIA)- Commenced Race-To-The-Patent Office.


What is a Trade Secret?


“Information, including a formula, pattern, compilation, program,

device, method, technique, or process, that derives independent economic value, actual or potential, from not being generally known to or readily ascertainable through appropriate means by other

persons who might obtain economic value from its disclosure or use; and is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.”

Uniform Trade Secrets Act of 1979, Amended 1985.


Problem

Once it has been exposed to the public, its Trade Secret status is lost forever.


Examples of Trade Secrets:

Customer listsDesign manuals, specs, test data, drawingsMarketing plans/strategies; pricing infoComputer programs and clustering techManufacturing processesChemical formulas; recipesNegative knowledge


How are Trade Secrets Different from Patents?

A perpetual right, as long as it is adequately protected from disclosure

SECRET – public disclosure that is required for Patents would destroy a Trade Secret

Don’t have to be novel or inventive


Patent vs. Trade Secret?

Caution: if a Court holds a Patent invalid, the underlying invention will have been disclosed to competitors with no corresponding benefit.


ALWAYS FILE A PATENT APPLICATION

A Non-Published Patent Application remains under a cloak of secrecy during its pendency.

If you later abandon the Application, you can still keep a Trade Secret.

Allowance of the Application prior to abandonment can be used to bolster Trade Secret status.

Public use of the Trade Secret, even if not readily discernible, will bar subsequent Patent Application filers.

FMC v. F.E. Myers & Bros. (1968)


Privacy Law


2 Types Of Privacy:

Right of action against a private party for violation of its privacy policy.

Right to be free from government intrusion.


1st Type-

There is NO generally applicable law.

- BUT there are some Federal Laws governing privacy policies in specific circumstances. (e.g., Children’s Online Privacy Protection Act, Gramm-Leach-Bliley Act, Health Insurance Portability and Accountability Act)


What is a Privacy Policy?

A statement or a legal document that discloses some or all of the ways a party gathers, uses, discloses, and manages a customer or client’s data (personal info), pursuant to a legal requirement to protect a customer or client's privacy.


California Online Privacy Protection Act of 2003

Requires “any commercial web sites or online services that collect personal information on California residents through a web site to conspicuously post a privacy policy on the site”.

- One of the more stringent state regulations for privacy protection.


In re: Google Inc. Privacy Policy Litigation (2012)

Suit by Android users who said Google violated its own privacy policy by disclosing their names, email addresses and account locations to third parties without permission, to boost advertising revenue.

- Dismissed in 2015 for lack of standing – breach of contract and fraud claims were withdrawn


2nd Type - Fourth Amendment

“The right of the people to be to be secure in their persons, houses, papers, and effects, against unreasonable searches and seizures, shall not be violated, and no warrants shall issue, but upon probable cause, supported by oath or affirmation, and particularly describing the place to be searched, and the persons or things to be seized.”


IS THERE A REASONABLE (LEGITIMATE) EXPECTATION

OF PRIVACY?

Test – Katz v. United States (1967)Copyright © 2015 Pollack, P.C. All Rights Reserved.

Today, U.S. Supreme Court recognizes that modern tech has

changed what is reasonable:Not legal to place a GPS tracker on a

suspect without a warrant.

United States v. Jones (2012)Not legal to search a person’s phone records

incident to arrest without a warrant.

Riley v. California (2014)


Except When It comes To National Security:

Klayman v. Obama – challenge to unchecked NSA surveillance of personal telephone metadata.

ACLU v. Clapper – challenges NSA’s metadata collection program revealed by Edward Snowden.


LEGISLATIVE UPDATE:USA Freedom Act (2015) – outlawed bulk

data collection but “back door” access remains.

On October 27, 2015, the U.S. Senate passed the Cybersecurity Information Sharing Act (CISA).

- unless vetoed, CISA will codify warrantless access to private information over the Internet.


What if a Trade Secret is accessed through:

Government Wire tapping Theft – Industrial Espionage Online Hacker Google Staff NSA Bulk Data Collection

- Access is improper only if it falls below the generally accepted standards of commercial morality and reasonable conduct.


KEY: Whether under Patent, Trade Secret or Privacy Law…

If the information is highly sensitive, don’t send it by

electronic means.



Date post:	18-Jan-2016
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Legal Issues Confronting Business in the 21 st Century: Patents, Trade Secrets, And Privacy By:Grant...

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