September 13, 2012

Patent Infringement and Trade Secret Violations: When Does Application of an Insider’s Industrial Knowledge Cross the Line?

In the wake of a US court injunction on Kevlar rival Hepacron (read summary of issues here), some may have questions about what activities constitute patent infringement or trade secret violation.

We interviewed Dr. Stanley Tocker, CECON Project Manager about this topic.

What is the difference between a patent and a trade secret?
A patent is a registered invention, protected by the US Patent and Trademark office for 17 years from the issue date or 20 years from the filing date, depending on the application date.  A trade secret is a company’s proprietary process or technology, which is not disclosed to others and often protected by a confidentiality agreement with employees.

What constitutes a violation of each?
A patent is considered infringed upon if technology that is detailed in the patent claims is used without the patent holder’s permission.  A trade secret violation occurs when an ex-employee of a company reveals details about a company’s systems and processes that are considered to be proprietary.

How can companies and consultants check to see if a technology is under patent protection?
By doing a patent search through the US Patent and Trademark office. This can be difficult, time consuming, and expensive, but it is vitally important that it is done before incurring major expenses.  This search should be done by someone with a technical background related to the technology in question. A new technology may be anticipated in an old existing patent and knowledge of technical terms and processes may be needed to recognize this. Intellectual property or patent analysis experts can help with this process.

What if a technology is considered “common practice” in a field and a company or consultant is unaware of a patent protection? Before proceeding with a new product or technology, one has to be completely certain that the process designs and compositions  are not patented as well as do thorough technical due diligence. Ignorance of a patent is not a defense against patent infringement.

In the Kevlar case, the scientist accused of revealing trade secrets was sentenced to prison. Does this happen often?
Rarely – often cases don’t make it to trial.

You knew the inventor of Kevlar, Stephanie Kwolek, personally when you both worked at DuPont. Can you share a little bit about her?
I remember her as a remarkable person who was always willing to help her fellow researchers. She was one of very few female researchers working at the Experimental Station in the 1950s and 1960s and was a trailblazer for other female chemists.  Think of how many lives she has saved through her invention!

Read more about the DuPont v. Kolon Industries Inc case here.

The CECON Group, Inc, specializes in placing experts with many years of industry experience in science and engineering fields in consulting and expert witness jobs. Discerning whether technical information is protected by a current patent is a frequent consulting request.