On April 4, 2016, the Senate unanimously passed S. 1890, the Defend Trade Secrets Act, by a unanimous vote of 87 to 0. The bill as passed can be found here. Because its provisions are the same as when it was reported out of the Senate Judiciary Committee on January 28, 2016, my published description and analysis, available here, still applies. A release from Senator Hatch, with a video of his remarks on the Senate floor, and statements of support from various organizations and companies, can be found here. I will continue to be closely involved in the process for this legislation, which now moves to the House of Representatives, and will post new important developments as they happen.

Thanks,
Jim 
 
PATENTS OR SECRETS:
DO YOU REALLY HAVE TO CHOOSE?
Back in 1974, when a lot of people thought that trade secret law couldn't survive alongside a patent system that encouraged public disclosure, the Supreme Court in the Kewanee case patted us on the head and said, "don't worry," assuring us that anyone with a patentable invention would be crazy to elect secrecy instead. Patents were exclusionary and "strong" while secrets were "weak." And for a number of years after the Federal Circuit was formed it seemed that patents kept getting stronger all the time, while the risks of secrecy (what if my competitor gets a patent on this?) were pretty obvious.
 
How times have changed. The courts have been shrinking the universe of what can be patented (business methods, software, therapies), the bars to patenting (obviousness, indefiniteness), and the enforceability of patents (injunctions, damages, fee-shifting). And Congress, through the America Invents Act, has made it easier and cheaper to challenge patents without going to court, establishing the Patent Trial and Appeal Board, which some have referred to as "patent death squads." While patents seem under attack, trade secrets are basking in a new level of attention from industry, reinforced by provisions of the AIA that virtually eliminate the old risks of protecting innovation by secrecy.
 
So does this mean that we should abandon patenting as a strategy? Not at all. Good patents remain strong, not only in protecting novel inventions from theft, but also in building recognized value, enabling financing and collaborations. Yes, our calculus needs to change, particularly in some technologies. But it was never an either/or situation anyway. The question of patenting or secrecy is less like arriving at an intersection than it is like eating at a buffet: you get to have something of everything that you like.
 
For a more detailed discussion of how to choose patent and trade secret protection in the modern environment, click here for a copy of my recent article "Patents and Trade Secrets Revisited."
 
Quick Updates

On February 25 China released its most recent revision to its draft Anti-Unfair Competition Law, setting a public comment period which closed March 25. An unofficial English translation can be accessed
 here, and a helpful analysis of the trade secret provisions can be found on the China IPR Blog here. Although the current draft is an improvement over the previous version, substantial problems remain regarding definitions (for example, proof of "use" by "modification" could imply that failed experiments may not be covered; and there is still no provision for the trade secret owner's access to proof of misappropriation).


The EU Trade Secrets Directive, which would provide a certain level of harmonization of trade secret standards among the 28 member states of the European Union, as revised and published on January 4, had been scheduled for its "reading" in the European Parliament on March 8, but this was postponed to April 12 at the earliest. Although the text of the Directive, as well as its slow progress, reflects the different perspectives of the various constituencies with an interest in the subject, most observers believe that passage is likely and that the Directive will enter into force in the coming months. Individual countries will then have two years to conform their national laws. The text as currently agreed is available here, and a summary with analysis from the IPKat can be accessed here.
Recent Publications

My Articles:

My December testimony to the Senate Judiciary Committee on the DTSA

Forbes article recommends my book  Secrets: Managing Information Assets in the Age of Cyberespionage

Find all of my recent articles here.

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James Pooley | james@pooley.com | www.pooley.com
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