Manufacturers have long faced a dilemma when trying to protect some of their most valuable assets—the manufacturing methods behind their products. Method patents can be difficult to draft, license, and assert. But trade secrets offer limited protection absent misappropriation. The DTSA aims to place trade secrets on equal footing with other forms of intellectual property by creating a new federal civil cause of action for trade secret misappropriation, and includes an ex parte seizure provision and whistleblower protections.
Under current legislation, the prior user defense preserves the right to continue the practice of a trade secret invention in the United States despite subsequent issuance of a third party patent. The availability of this defense limits the need to patent every commercial improvement and simplifies freedom to operate analysis for commercial processes.
With these advantages in mind, for technologies such as catalysis, electrode production processes, and complex processing of gas diffusion layers, trade secrets could in some instances be a desirable alternative to patents. One should consider developing a trade secret protection plan that fits your business, and assess the sensitivity level of various types of information and establishing security measures that should be in place at each level. To qualify as a trade secret, federal law requires that “reasonable measures” be taken to keep the information secret. This presentation aims to inform how courts have treated various types of secrecy measures mentioned in recent cases.