Feature Comment: New Laws and Procedures Affecting IP Management Strategies

By James G. McEwen[1]

Legislation Affecting Trade Secret Owners Enacted Federal Legislation Affecting Trade Secret Ownership and Rights

Among other laws affecting trade secret ownership passed in 2007, Congress passed public law 110-175.  Entitled the Openness Promotes Effectiveness in our National Government (OPEN) Act of 2007, the OPEN Act has the potential to cause problems for trade secret owners who rely on the trade secret exemption to the Freedom of Information Act (FOIA), 5 U.S.C. §552(b)(4), to prevent release of trade secrets held by the Government.  By way of background, 5 U.S.C. §552(b)(4) allows the Government to prevent release of trade secret information which would otherwise have to be released under FOIA.  However, in order to prevent release, trade secret owners are generally required, pursuant to Executive Order 12600, to aid the Government to support an assertion that the 5 U.S.C. §552(b)(4) exemption applies to a requested record and in particular to help show that the disclosure would cause competitive harm to the submitter.  This support is crucial since, as noted by the Department of Justice FOIA Guide, “[c]ourts have repeatedly rejected competitive harm claims — and even have ordered disclosure — when those claims were advanced by agencies on their own.”  Freedom of Information Guide, pp. 409-410 (March 2007).

While 5 U.S.C. §552(b)(4) is not directly affected by the OPEN Act, section 6(a) of the OPEN Act requires that the agency respond to a FOIA request within 20 days of the date the request is made.  As such, in order to protect trade secret information in public records to which 5 U.S.C. §552(b)(4) should apply, agencies will be under increased pressure to quickly find the submitter of such information, and if possible, within this 20 day period, require any such support needed to allow the agency to withhold trade secret information under 5 U.S.C. §552(b)(4).  As such, trade secret owners will need to be on the alert for such agency requests and have procedures implemented to respond promptly to such requests from agencies since the failure to timely respond will jeopardize the Government’s ability to protect the trade secret against disclosure under FOIA.

Strategies for Utilizing the Patent Prosecution Highway Program

1.       Background

In order to reduce duplicative efforts where applicants have filed corresponding applications in the United States and in other countries, the United States Patent and Trademark Office has implemented the Patent Prosecution Highway Pilot Program to fast track the examination process where an application in one country has been found allowable, but has not been examined in a second country.  This program is limited to applications pending before the United States Patent and Trademark Office and select foreign patent offices.  Where such applications are copending, the program allows the Examiners in a country of second filing to use the results of an Examiner in a county of first filing, and thus advance the second filed application out of turn.

Currently, the selected foreign patent offices are the Japanese Patent Office, the United Kingdom Intellectual Property Office, the Canadian Intellectual Property Office, and the Korean Intellectual Property Office.  The program is currently slated to end on January 28, 2009 for the Canadian Intellectual Property Office and the Korean Intellectual Property Office programs, September 4, 2008 for the United Kingdom Intellectual Property Office, and has been implemented full time with the Japanese Patent Office.

2.       Process

In order to take advantage of the Patent Prosecution Highway Pilot Program, there must be claims found to be allowable after examination in the first country. After the finding of allowability, the applicant may, in the second country, file a Request for Participation in the Patent Prosecution Highway, which includes a Petition to make the application special.  Where the allowed claims are not the same as the claims pending in the second country, the applicant will need to make any necessary amendments to ensure that the claims in the second country sufficiently correspond to the allowed claims.  By way of explanation, the claims will “sufficiently correspond” where, accounting for differences due to translations and claim format requirements, the claims are of the same or similar scope.

Should the Request be accepted, the second application will be advanced out of turn and examined prior to when the application would otherwise be examined.

By way of example, assume a first application is filed in Korea, and a second application is filed in the United States claiming priority to the first application under 35 U.S.C. §119 or through the Patent Cooperation Treaty (PCT).  If the first application is examined and is found to contain allowable claims, the applicant would be entitled to file a Request for Participation in the United States to ensure that the second application is advanced out of turn and receives early examination.  If the claims in the United States are not substantially the same as those in Korea, the applicant would be entitled to amend the claims to ensure that the claims are substantially those of the allowed claims in Korea.

Suggested Request for Participation forms are found on the United States Patent and Trademark Office website, http://www.uspto.gov/web/forms/index.html.  Included in these forms is generally a requirement to list all office actions issued by the first country’s patent office as well as the allowed claims, or to grant authority to allow the second country to access such actions.  In addition, a translation of the allowed claims may be required where the allowed claims in the first country are not in English.   Also required as a listing of documents reviewed during the examination in the first country and over which the claims were found allowable.  Lastly, the applicant in the second country will need to fill out a claim correspondence table (e.g., claim 1 in first country corresponds to claim 6 in the second country) to allow the Examiner in the second country to process the second application more rapidly.

3.       Strategies to Implement

While the ability to have applications be taken out of turn has obvious benefits, the use of such a Request can be of special interest in those countries or technologies having severe examination backlogs.  For instance, according to the United States Patent and Trademark Office’s Performance and Accountability Report Fiscal Year 2007, the average pendency before a first office action is 25 months, with more severe backlogs in the computer and communications technologies.  In contrast, other countries, such as Korea, have substantially lower pendencies.   Given the mismatch in backlogs, applicants should be alert for such allowances and determine which remaining countries have not received an action.

Indeed, it may be advisable to specifically file in countries with rapid examinations in order to ensure that corresponding applications in remaining countries are advanced more rapidly.  In these situations, applicants should ensure, assuming the allowed claims are acceptable, Requests for Participation are filed in the remaining countries.

Where the claims in the second country do not sufficiently correspond to the allowed claims, applicants should consider amending the existing claims or possibly filing a new divisional or continuation application having the allowed claims.   In this manner, the applicant can maintain the pendency of the parent application in the second country while increasing the chances of an early examination of another claim set which has already been found allowable in another country (thus increasing the chance of allowability for the other claim set).

[1] Portions of this comment appearing in forthcoming 2007-2008 Final Report, ABA IPL Committee 410 Trade Secrets and Interference with Contracts. The opinions in this article do not represent the official positions of Stein McEwen, LLP.