In Dec. 2020 the U.S. Court of Appeals for the Ninth Circuit held that the publication of a trade secret in a patent application extinguishes trade secret status. Attia Architect PC, et al. v. Google LLC, et al. Architect Attia developed a system and method for automated design, fabrication, and construction called Engineered Architecture (EA). In 2010 Attia entered into a partnership with Google wherein he disclosed his trade secrets related to the technology to Google. A year later, Google filed patent applications related to the technology’s trade secrets. Attia executed patent assignment agreements effectively transferring any rights in the patents to Google. The patent applications were published 18 months from the filing date pursuant to 35 U.S.C. § 122(b)(1)(A) making the alleged trade secrets publicly available. Google then allegedly excluded Attia from the project and used EA to create a platform for use by building professionals to streamline the design process by relying on artificial intelligence.
Attia sued Google for trade secret misappropriation under California’s trade secrets statute and the federal Defend Trade Secrets Act (DTSA). The district court dismissed his federal claims with prejudice and declined to exercise supplemental jurisdiction over state law claims. Under both California state trade secrets law and the DTSA, the disclosure of the alleged trade secrets in the published patent application publication extinguished their status as protectable trade secrets. (Click here for a previous blog concerning the same decision which addressed another issue involving the DTSA). Nor was this a situation where Google had filed the patent applications without Attia’s permission.
Is it possible for trade secrets and inventions to co-exist? Maybe. Inventors may try to maintain what they as deem as trade secrets by failing to disclose key elements of the invention in the patent application and specification. This approach can be difficult to navigate because inventors may risk invalidating a patent by withholding critical information from the patent examiner during prosecution of the patent. But see Pike v. Texas EMC Management, LLC (Texas state appellate court finding that EMC had “purposely excluded certain information” from its patent application in order to maintain it as a trade secret and was thus entitled to maintain its claim against Pike for trade secret misappropriation.
Any information disclosed in a patent application publication or issued patent, is by definition, published and not subject to trade secret protection. If the invention disclosed in a patent application is or will not be the subject of a foreign application, the patent applicant can file a non-publication request under 37 CFR 1.213(a) to prevent its publication 18 months later after the filing date. For utility applications relying on the filing date of a provisional patent application (PPA), the clock starts ticking from the PPA’s filing date. The non-publication request will allow the application to be maintained as a trade secret over the invention during the patent application prosecution process which can take many years.
If a patent does not issue, trade secret protection will continue until when and if the trade secret(s) become publicly available, through e.g., the inventor’s failure to maintain the trade secret in confidence. If, on the other hand, the examining attorney concludes that claims are patentable, the inventor can make the determination as to whether issuance is “worth” giving up trade secret rights in the published patent document by deciding to withdraw the patent from issuance under 37 C.F.R. § 1.313.
Take Aways
- Dlsclose any trade secrets related to your invention to your patent attorney. Ask the attorney whether inclusion of the trade secrets in the patent application is essential to meet the USPTO’s invention disclosure requirements.
- Consider filing a non-publication request providing you have no intention of filing a foreign application. If you do end up filing a foreign patent application, remember that that your U.S. patent application may also become subject to publication.
- Be sure to continue safely guarding your trade secrets quite apart from any confidential patent application. Trade secret protection is an on-going endeavor
- Contact us for a complimentary trade secret checklist to get you started in understanding trade secret protection.
THANK YOU FOR YOUR INTEREST IN THIS BLOG. AS USUAL THE CONTENT IS FOR INFORMATIONAL PURPOSES ONLY AND IS NOT LEGAL ADVICE.
Intellectual property law is a complex area of the law. Contact us for a complimentary consultation on patents, trademarks, trade secrets, and copyrights. Our mission is to serve innovators and creators in protecting the fruits of their hard work and ingenuity through our Client Creed: Conscientious, Rigorous, Energic, Empathetic, and Diligent representation.
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