Anticipate This!™ | Patent and Trademark Law Blog

Dow’s Trade Secrets Sold to China?

Posted in General Commentary by Jake Ward on August 29, 2006

According to this Reuters article, U.S. authorities have recently arrested David Liu, a former Dow R&D employee of 27 years (retired), and charged him with attempting to sell stolen trade secrets to Chinese companies.  It is further alleged that Liu later hired Dow Chemical employees to prepare a detailed engineering package to sell to prospective Chinese buyers.

The secrets Liu allegedly was trying to sell were connected to Dow´s Tyrin-brand chlorinated polyethylene business. Tyrin is used primarily as an impact modifier in vinyl and PVC, as well as general rubber applications.  Tyrin applications include automotive and industrial hoses, electrical cable jackets, vinyl siding and window framing.  See Dow website.

The Uniform Trade Secrets Act (UTSA) defines a “trade secret” as information, including a formula, pattern, compilation, program device, method, technique, or process, that: (i) derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use, and (ii) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy. 

When used properly, trade secrets can be a valuable means of protecting intellectual property.

Note:  David Liu has been charged with 15 counts, including eight counts of wire fraud. If convicted, he could face a total of 300 years in jail and a maximum fine of $9.75 million. 

Your Grantable Ticket, Please?

Posted in Practice Commentary by Jake Ward on August 29, 2006

As of August 25, 2006, the USPTO has established procedures under which the examination of a patent application may be accelerated.  See USPTO Website, Accelerated Examination. Under these procedures the USPTO will advance an application out of turn for examination if the applicant files a grantable petition to make special. 

In brief, to qualify for the new accelerated examination program, applicant must do the following:

1. Submit a petition to make special and a fee (where appropriate);
2. File a request with respect to an application filed under 37 CFR 1.111(a);
3. File an application via the EFS or EFS-Web; also all follow-on submissions;
4. File a complete application complying with 37 CFR 1.51;
5. File 3 or fewer independent claims and no more than 20 total claims;
6. File an application for a single invention or agree to elect without traverse a single invention for examination;
7. Agree to an interview with the examiner to discuss any outstanding issues arising in the examination process;
8. Conduct a pre-examination search; and
9. Provide an accelerated examination support document.

As I stated in my post “All Aboard the USPTO Express?,” I believe this program is an interesting proposition.  It certainly remains to be seen whether this new procedure will be accepted by practitioners and/or have any appreciable impact on USPTO backlog.

USPTO Five-Year Plan

Posted in General Commentary, Practice Commentary by Jake Ward on August 29, 2006

The USPTO has recently announced the release of a DRAFT Five-Year plan for “Continued World Leadership in IP Protection and Policy.” The roadmap was made available for public comment.  See press release.

With respect to patents, the proposals are aimed at ensuring quality and timeliness in the patent review process. Broad goals are outlined, e.g. programs to define and improve “quality,” determining acceptable time frames for prosecution, hiring, training and retaining highly skilled patent examiners, abolishing the one-size fits all examination system, focusing examination on the claimed invention, and leveraging state-of-the-art information technology.  Specifically enumerated initiatives proposed for meeting said goals include:

          1.) hiring at least 1,000 patent examiners annually for the next five years;
          2.) possibly establishing regional offices;
          3.) creating partnerships with universities;
          4.) offering retention bonuses and new monetary awards to patent examiners for meeting goals; and
          5.) maximizing the potential of state-of-the-art electronic tools.

These are lofty goals, and the USPTO certainly has its work cut out for it when it comes to reforming the system.  The USPTO should be applauded for taking the task on . . . and it will be interesting to watch what changes will be adopted (and, more importantly, whether those changes actually improve the quality of patents issued). 

I wonder, does “state-of-the-art electronic tools” include the Examining Machine?