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: The Trade Secrets Vault

Commentary: Patent or trade secret? Changing times call for re-evaluation of IP strategies.

Michigan Lawyers Weekly Kelly Burris Recent events have caused drastic changes in the legal landscape for patents, with yet additional threats looming. First, a United States Supreme Court ruling in April 2007 (KSR International Co. v. Teleflex, Inc. et al., 550 U.S. ___, 82 USPQ2d 1385 (2007)) significantly raised the bar for patentability, making it much more difficult to obtain patents and also much easier to invalidate existing patents. For example, the mere substitution of one known element for another is not patentable. Applying known techniques to the known art ready for an improvement, or if there exists a design need or market pressure, weigh against patentability, too. Inventions that create a new synergy, teach away from combining known elements, or combine known elements resulting in a change in function are where the patent fruits may now be borne. Pending legislation (The Patent Reform Act of 2007 (H.R. 1908, S. 1145)) is gaining momentum and is slated to convert the United States Patent Laws from a "first-to-invent" to a "first-to-file" system. Additional measures include limitations on the amount of damages recoverable in an infringement action, limitations on venue, and allowing the USPTO to have substantive rule-making authority. Late last year, the United States Patent and Trademark Office (USPTO) egregiously put in place new rules that limited the number of claims per patent and the number of continuation applications. In the interim, a District Court recently ruled that these new rules promulgated by the USPTO are beyond their rule-making authority. However, the USPTO has appealed the ruling, and with the Patent Reform Act providing substantive rule-making authority to the USPTO, these rules may yet rear their ugly heads. Finally, the legitimacy of "business method" patents is currently being considered by the Federal Circuit. (Ex Parte Bilski, BPAI 2006). As a result, the time is ripe to revisit an often overlooked alternative to patents as the rights of patentees and the scope of protection for their inventions continues to be squeezed.

Full post as published by The Trade Secrets Vault on June 14, 2008 (boomark / email).