Tuesday, March 10, 2015

Patent attorney stealing trade secrets?

IPBiz discussed a joint venture gone bad in the Roquette/Solazyme matter, but questioned whether the purloined (and second) patent application would have gone anywhere. A different entity should not be able to get allowance on claims copied from an earlier-filed, unrelated, application.

A different "bad act" is alleged in the Nicolo/Patterson, Belknap matter, involving assertions by solo inventor Nicolo that a patent attorney misappropriated trade secrets from Nicolo.

Of interest to IPBiz is a comment suggesting that this case illustrates that trade secrets and patents can coexist and fill gaps in the protections each offers. [See The Line Between Trade Secrets and Patents: Getting Dual IP Coverage on the Same Technology ]. IPBiz suggests that the headline is a bit misleading; one cannot get trade secret and patent protection on the same technology.

The 2013 complaint of Enrico Nicolo was related to various patents of Nicolo in the medical area. Of special relevance were US '809 and '398.
The allegations of trade secret theft did NOT involve the disclosures within these patents. The alleged trade secrets involved information such as "who" had approached Nicolo about these patents, Nicolo's knowledge of potential infringers, and Nicolo's plans for developing the technologies. [See paragraph 39 of the complaint. Of separate relevance is the inclusion as a secret of Nicolo's knowledge of the "prior art", which pursuant to the duty of disclosure should not be a secret.]

As to technical matters, Nicolo did not assert that anything in the issued patents was a secret.

The "Line Between" post noted

While Dr. Nicolo’s most recent complaint doesn’t accuse Ethicon of stealing patent-pending secrets, his complaint indicates that he made such allegations against Ethicon in the past.


Is disclosure in a provisional patent application a "trade secret" until that disclosure is actually published? One notes that a trade secret is the subject of efforts that are reasonable under the circumstances to maintain its secrecy. Is disclosing such to the patent office an effort to maintain secrecy? One source suggests filing a provisional, by itself, does NOT remove trade secret status [== The filing of a provisional application in and of itself never destroys trade secret protection. Provisional applications themselves are neither examined nor published. (The publication of a non-provisional application claiming priority from a provision will trigger public access to that provisional application. == http://www.noreklaw.com/trade_secrets_v_filing.htm ]

Nicolo's complaint survived a 12(b)(6) motion to dismiss.

Instead, [t]he Supreme Court's Twombly formulation of the pleading
standard can be summed up thus:>
stating ... a claim requires a complaint with enough factual matter (taken as true)
to suggest the required element ...
[and provides] enough facts to raise a reasonable expectation that discovery will reveal evidence
of the necessary element.=
@Phillips , 515 F.3d at 235; see also
Wilkerson v. New Media Technology Charter School Inc.
, 522 F.3d 315, 321 (3d Cir. 2008) (A
The complaint must state >
enough facts to raise a reasonable expectation that discovery will reveal evidence of the
necessary element. =@)


**IPBiz posts on Solazyme/Roquette matter

The Solazyme/Roquette matter: identical claim examined differently in distinct ISRs


**PatentlyO noted of the Nicolo case:

Nicolo v. Patterson Belknap Webb & Tyler, LLP, is a suit brought by an inventor-patentee who claims that a Patterson attorney met with him under the guise of seeking to represent him in a suit against third-parties, while the real purpose was to obtain information for its client, Ethicon.



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