Fourth, the secret must
have value as reflected in some competitive advantage
that it gives to the owner. Pooley § 4.01
[1].
Because information
eligible for trade secret protection may also be eligible
for patent protection there is a unique interface between
trade secret “secrecy” principles and patent
principles and practice.
Patent
Confidentiality
35 U.S.C. § 122:
Confidential status of applications; publications of
patent applications
(a) Confidentiality.
Except as provided in subsection (b), applications for
patent shall be kept in confidence by the Patent and
Trademark Office and no information concerning the same
given without authority of the applicant or owner unless
necessary to carry out the provisions of an Act of
Congress or in such special circumstances as may be
determined by the Director.
(b)
Publications.
(1) In
general.
(A) Subject to paragraph
(2), each application for patent shall be published, in
accordance with procedures determined by the Director,
promptly after the expiration of a period of 18 months
from the earliest filing date for which a benefit is
sought under this title.
Effect of Patent
Application
Patent applications filed
with the United States Patent Office are kept in
confidence; no information concerning an application may
be given without the authority of the applicant or owner.
35 U.S.C. § 122. Because a patent application is
deemed a confidential disclosure, the applicant retains
his trade secret rights and the state courts, their
jurisdiction. Painton & Co. v. Bournes, Inc., 442
F.2d 216, 223-225, (2d Cir. 1971). This is sound, for
otherwise the application would forfeit equitable
protection during pendency of the application, patent
remedies generally not being available under federal
patent law until the patent issues. 35 U.S.C.
§283.
At the time of the
application, the inventor or discoverer has no means of
knowing whether the patent will ultimately be granted. If
the trade secret is valuable, the discoverer, conceiving
it to be patentable, would by making the application
hazard both trade secret and patent. This would defeat
the very purpose of patent law, which conditions monopoly
for a limited period upon the complete surrender
thereafter of the subject matter to the public, and we
think no such principle can be deduced from the
authorities. A.O. Smith Corporation v. Petroleum Iron
Works Co. of Ohio, 73 F.2d 531 (USCCA 6th Circuit 1934)
citing Macbeth-Evans Glass Co. v. General Electric Co.,
246 F. 695, 701 (C.C.A. 6).
Effect of Patent
Grant
Matter which prior to
patent grant might have been subject to protection as a
trade secret is deemed disclosed to the extent that it is
described in the patent. Julius Hyman & Co. v.
Velsicol Corp., 233 P.2d 977, 998, cert. denied, 342 U.S.
870, reh’g denied, 342 U.S. 895 (1951). Not every
patent discloses a trade secret. Thus a product patent
may not disclose the manufacturing methods used to make
the patented product. Modern Controls, Inc. v.
Andreadakis, 578 F.2d 1264, 1269 (8th Cir.
1978).
A trade secret owner
forfeits his trade secret protection to the extent that
the trade secret owner has published the matter by way of
a claimed invention that the assertion of that matter as
trade secret thereafter with respect to periods in which
the patent is issued may in and of itself constitute sham
litigation. Milgrim §1.06[1]
M. K.
Silverman
