INTRODUCTION TO
INTELLECTUAL PROPERTY
CLASS 4
September 8 2003
Trade Secrets II
QUIZ 1 (Trade Secrets)
• Will be handed out on next
Monday (Sept. 15)
• Open book
• Please type
• Exam numbers – Academic dean’s
office
Elements of Trade Secret Claim
• 1. Subject matter must qualify
for trade secrets protection (last
class)
• 2. Reasonable efforts to protect
secrecy
• 3. Misappropriation
Reasonable Efforts to Maintain
Secrecy
• UTSA § 1(4)(2) – CB p. 30
• Restatement of Torts – factors
(CB p. 38)
• BUT see Restatement of Unfair
Competition § 39 (CB p. 47)
Relevant Factors in determining
reasonableness of efforts to keep
secret
• Value of information
• Care taken when disclosing information
to others who need to know it
• Limits on disclosure of information
• Means taken to maintain confidentiality
when disclosure is made
• Physical limitations on access
Relevant Factors in determining
reasonableness of efforts to keep
secret
• Keeping track of copies of information
and records of those with access?
• Notice to employees and others of
restrictions on information
• Industry standard and ethics
• Whether an overall security program is
in place
• Costs of security measures
Why Does Law Require
Reasonable Efforts to Maintain
Secrecy?
Why Does Law Require
Reasonable Efforts to Maintain
Secrecy?
• FAIRNESS THEORY – evidence of
wrongful act
• PROPERTY THEORY – evidence of
value of secret
PUBLIC DISCLOSURE CAN
DESTROY SECRECY
PUBLIC DISCLOSURE CAN
DESTROY SECRECY
• Publication of issued patent/patent
application
• Publication
• Disclosure by third party
• Sale of commercial product
• Accidental disclosure
• Government requirement of disclosure
(taking)
MISAPPROPRIATION
• 2 kinds
• 1. Disclosure by improper means
• 2. Disclosure that amounts to a breach of
confidence
• SEE: Restatement of Torts § 757, UTSA §
1(2), Restatement (Third) of Unfair
Competition § 40.
Reverse Engineering
• Why is this improper means?