December '08 Newsletter

Software and Business Methods patents
Trade Secrets
Copyright Registration

Timely Tips:

Protecting Trade Secrets

A trade secret is any secret information that gives you a competitive advantage.  Trade secrets are protected by Texas and Federal law, but to enforce your rights, you may be required to show that you recognized the information as a trade secret and acted accordingly.  Steps you should take include:


·        Limit access to trade secret documents.

·        Label trade secret documents and drawings as confidential and proprietary.

·        Modify the employee handbook to include warnings about misuse of trade secrets.

·        Modify non-compete and non-disclosure agreements to address trade secrets.

·        Educate your engineering, R&D, marketing and sales staff on the proper handling of trade secrets.



Why register a copyright?

Copyrights arise automatically, so why bother with registration?


·        Registration within 5 years of creation is prima facie evidence in court that your copyright is valid.

·        Registration is inexpensive – see Copyright Office fees

Only infringement that occurs after you register entitles you to collect attorney’s fees in a lawsuit.

In re Bilski:

The Court of Appeals for the Federal Circuit (CAFC) has finally released their Bilski ruling. This decision reaffirms that business methods, and in particular, software programs are eligible subject matter for a US patent, dispelling some concerns that the court would set new guidelines for software, or perhaps rule that software was no longer patentable. 


The court instead, reiterated the Supreme Court ruling that business methods and software must meet the “machine” or “transformation” test.  If the invention is tied to a particular machine (not just a general purpose computer) or if it transforms a particular article into a different state or thing, then it is proper subject matter for a patent.  This certainly means that firmware for a specific controller would qualify, as would software that guides a saw to convert trees into lumber.  The court did say that a method or software that transforms data could qualify as long as the data represented specific physical objects.  So a method of inverting a matrix most likely would fail the test, but that same method used for structural analysis of a steel building might be considered proper subject matter for a patent.


Of course, being proper subject matter is just one of many hurdles – the invention must still be novel, non-obvious and useful.

Copyright © Robert F. Gilbert 2008


Robert F. Gilbert, Attorney at Law

10100 Kleckley #15-B

Houston, TX 77075

(713) 378-9645

(713) 341-9062 (fax)

(281) 389- 2542 (cell)