Avoid Infringing upon Patents, Trade Marks and Trade Secrets | DCR Workforce Blog

Avoid Infringing upon Patents, Trade Marks and Trade Secrets

The Internet has spawned a proliferation of related patents many of which extended e-commerce processes. The efforts of Chinese hackers to access Google’s source code actually resulted in an intervention from the American Government and a withdrawal of Google from China. It is necessary to be aware of the repercussions of infringing others’ patent over processes and paying for the right to use them rather than face charges of infringement and pay penalties and legal costs at a later date. A case in point is the settlement won by Convolve against Dell ($1.5 million),  Western Digital ($2.5 million) and Hitachi ($1.4 million) for its patented process to control vibrations and noises in hard drives.

There is some protection from patent infringement charges in not allowing any process to be patented if it was in public use or available sale for one year before the patent application date.


Since the American law protects the rights of the ‘first-to-invent’ against the rights of the ‘first-to-file’, one may file as an ‘early inventor; for business methods – which were not considered patentable earlier; if they can prove:

  • That they have commercially used the process prior to the date the patent application was filed.
  • Practiced the subject matter at least one year before the date the patent application was filed.

Sub-marine Patents:

As these remain secret until issued, the substantial investments in using the technology made by competitors and others stand at risk. There is some protection in having patent applications being published, 18 months after they are filed.

Trademarks & Service Marks:

Protection is available for words, names, symbols or devices used in commerce for goods and services. Promotional slogans, jingles, product shapes, characters used by a commercial entity and distinguish its goods or services become its trademarks. Deliberate creation of confusion between an established brand with a new one qualifies under infringement. By registering a trademark, its owner obtains the right to use it across the US.

All states in America protect even unregistered trademarks in the geographical area of its use. Some exceptions are:

  • Geographic names like Idaho potatoes are not patentable; nor are names like New York Gallery if they are based elsewhere as advised to Hiromichi Wada (1999).
  • Kellogg was unable to bring trademark infringement charges against Exxon, when they started to use their Tony the Tiger to promote food products in addition to its original use with motor fuels; while some dilution was recognized the delay in bringing an action.
  • Domain names do not convey trademarks, if they are not identified with the entity’s goods and services, as in the case of ecommerce sites like amazon.com and ebay.com.

Trade Secrets

Yet-to-be-patented as well as non-patentable information gets protected under state law as a trade secret. Trade secrets contain information like customer lists, designs, compilations, techniques, programs, formulae, methods, and processes which are commercially valuable to their owner and are protected as secrets. The owner of a secret has the right to protect misappropriation of such a secret. But someone else arrives at the same information through independent research, the owner of a trade secret cannot press any claim. ClearOne was awarded million-dollar damages when WideBand and Biamp misappropriated its conferencing technology and Ebay ended up paying undisclosed settlement as well as $30 million damages to MercExchange for using its proprietary code for the ‘Buy it now’ function on its site.

The content on this blog is for informational purposes only and cannot be construed as specific legal advice or as a substitute for competent legal advice. They reflect the opinions of DCR Workforce and may not reflect the opinions of any individual attorney. Do contact an attorney for advice specific to your issue or problem.
Lalita is a people/project manager with extensive experience in operations, HCM and training and development across industries like banking, education, business consulting, BPO and information technology. She believes in a dynamic approach to life and learning as change is the only constant.