Monday, November 30, 2020

What administrative actions might we expect on COVID-19 in President-elect Biden’s administration?

By Rachel Sachs, Jacob S. Sherkow, Lisa Larrimore Ouellette, and Nicholson Price

When President-elect Joe Biden is inaugurated in January, his administration will face the ongoing public health and economic challenges created by COVID-19. Even if Biden takes office without control of Congress, we can expect his administration to take important actions regarding COVID-19 innovation in response to the pandemic. In this post, we consider three main pillars of his administration’s likely response (as articulated by the Biden-Harris transition website) and explain the legal foundations behind them.

Saturday, November 21, 2020

What role is AI playing in the COVID-19 pandemic?

By Nicholson Price, Rachel Sachs, Jacob S. Sherkow, and Lisa Larrimore Ouellette

Promising results for the Pfizer/BioNTech and Moderna vaccines have been the most exciting COVID-19 innovation news in the past few weeks. But while vaccines are a crucial step toward controlling this virus, it is important not to overlook the many other technological developments spurred by the pandemic. In this week’s post, we explore how the COVID-19 pandemic is proving a fertile ground for the use of artificial intelligence and machine learning in medicine. AI offers the tantalizing possibility of solutions and recommendations when scientists don’t understand what’s going on—and that is sometimes exactly what society needs in the pandemic. The lack of oversight and wide deployment without much in the way of validation, however, raise concerns about whether researchers are actually getting it right. 

Monday, November 2, 2020

Trade Secrets and Prior Art

I have published an article entitled "The Trade Secrecy Standard for Patent Prior Art," co-authored with Sharon K. Sandeen. 

The article, which is forthcoming in American University Law Review, argues that patent prior art cases can be explained using concepts of publicness and secrecy that match those used in trade secret law. In other words, what counts as prior art against a patent pursuant to 35 U.S.C. § 102 (2011) is informed by the definition of a trade secret pursuant to 18 U.S.C. § 1839 (3) (2016).

The paper can be downloaded here. I've posted an excerpt below, applying the trade secrecy standard for patent prior art to the Supreme Court's interpretation of a "public use" in Egbert v. Lippman.
The origin of [the Federal Circuit's] seemingly counterintuitive notion of what makes a use “public” is usually traced to the Supreme Court’s holding in Egbert v. Lippman. In Egbert, the inventor of an improved corset spring (Samuel Barnes) gave two samples of the invention to Francis Lee Egbert (Mr. Barnes’ then girlfriend and eventual wife). She wore them for more than two years before Mr. Barnes applied for a patent; and they allegedly showed and explained the corset spring to a friend, Joseph Sturgis, who came over to Mr. Barnes’ house for dinner. Even though the spring was sewn into a corset and therefore, by its nature, was not visible to the public, the Court held it was in “public use” because it was given “to another” (to Frances and to Mr. Sturgis) “to be used” by them “without limitation or restriction, or injunction of secrecy.”

This holding baffled the dissenting Justice Miller, who wrote rhetorically that “[i]f the little steep spring inserted in a single pair of corsets, and used by only one woman, covered by her outer-clothing, and in a position always withheld from public observation,” was a “public use,” then he was “a loss to know the line between a private and a public use.”

But the trade secrecy standard explains how the Egbert Court drew “the line between a private and a public use.” The Court’s concept of a “public use” was, in its own words, any sharing of the invention with another for use, without placing them under an “injunction of secrecy[.]” The Court’s use of this phrase, “injunction of secrecy,” is unlikely to be coincidence. This phrase appeared in contemporary trade secret cases to refer to a duty of confidentiality that might give rise to an injunction.

In trade secret law, a court might have found that—although the corset spring was neither generally known in the industry nor readily ascertainable by proper means—it had not been the subject of reasonable efforts to maintain its secrecy, given how liberally Barnes shared it with his girlfriend and house guests, without placing them under contractual or other restrictions that would have imposed an obligation of confidentiality. 
We might debate whether this was the right decision, from the perspective of trade secret law and modern domestic relationships. In trade secret law, a duty to maintain secrecy does not necessarily have to be written down. It depends upon the circumstances. Even if not expressly stated, a duty to maintain secrecy can be inferred if, among other things, “the trade secret was disclosed to the person under circumstances in which the relationship between the parties to the disclosure” indicates an intent to keep the information confidential. That standard might have been met in Egbert, because the most public part of the disclosure was to Frances, who was at the time the inventor’s domestic partner. ...  

In any case, even if the Egbert Court may have reached the wrong factual conclusion, it is hard to argue with the fact that the standard being applied was a trade secrecy one. Other cases from the same period indicate courts thought of secrecy in a similar way—deliberate, beyond the ordinary efforts to conceal the invention was needed to keep something out of the public eye.

For example, just a few years later, in Hall v. Macneale, the Court again denied a patent for an improved design for a safe that the inventors had used more than two years prior to filing a patent. Citing its opinion in Egbert, the Court held that—even though the inventive design feature was effectively “hidden from view,” since it was inside the safe, and revealing it would have required a “destruction of the safe”—the inventors had not made deliberate efforts at concealment. Like Mr. Barnes, they’d simply relied on the inherent nature of the safe designs to maintain the secrecy of the invention. Like in a trade secret case, where zero efforts to maintain secrecy will disqualify an owner from enforcing their trade secrets, this simply was not enough.

The trade secrecy standard—if not being kept as a trade secret, then patent prior art—sheds still more light when prior art activity arises within an employment setting, where courts must assess whether the company has exercised sufficient secrecy precautions with respect to its own employees. ..."

The full paper can be downloaded here.