Remedies –Damages – actual and punitive –Royalties –Injunction Misappropriation o –If accomplished by illegal means Bribery, burglary, theft, trespassing, wiretapping, hacking, etc. o –If accomplished by improper means (even if not illegal) E.g., breach of confidentiality obligation or non-disclosure agreement Flying a helicopter over the building to see in o –Not misappropriation if Independently developed Information found on product Reverse engineering Doctrine of Inevitable Disclosure - may prevent an employee who has left Company A form working for Company B if the employee’s new job duties will inevitably cause the employee to rely upon knowledge of the former employer’s trade secrets. o Elements 19
Employee of one company goes to work for competitor Employee possesses trade secrets of first employer Employee’s job at competitor is very similar to job at former employer such that it is impossible for employee to do new job without using or disclosing former employer’s trade secrets Patents Source of law: o Constitution 1790 o Patent Act of 1952 (as amended) o America Invents Act of 2011 (AIA), effective March 16, 2013 o State law determines ownership, rights to use and transferability (sale or license) o International: Governed by laws of individual countries Paris Convention (WTO members) Patent Cooperation Treaty In exchange for disclosing the invention, the patent holder receives a 20-year* (14 for design patents) exclusive right to make, use, or sell the patented invention Cannot be extended except drugs, medical devices and additives can be extended for 5 years Filing an application with the U.S. Patent & Trademark Office (PTO) constitutes “disclosing” the invention 20-year period runs from the date of the application Equivalent to a limited monopoly; i.e., a bar to competition o –Purpose is to encourage investment of time and resources into the development of new and useful discoveries and inventions Once term is over, invention enters “public domain” and anyone can make, use, or sell it without paying royalty Requirements of a “regular” patent application o –Names of inventor(s) and who owns it (if different) and any “assignee-at-issue” (e.g., employer in work-for-hire arrangement) 20
o –Thorough and concise description of the invention and drawings sufficient to “enable” a hypothetical person with ordinary skill in the applicable “art” to make it and put it into use o –Disclose the “contemplated” best mode for putting invention into use (aka “preferred embodiment”) o –One or more “claims” – the precise elements and limitations for which the inventor seeks protection “Provisional” application o –Does not require inclusion of claims o allows for the deferral of many patenting costs for up to a year o –Must file regular application within one year o –Resulting patent dates back to filing of provision application Process by which a patent is obtained from the PTO is called “patent prosecution” Person in PTO processing the patent is called “patent examiner”
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- Spring '08