Business Law for engineering Case study

Business Law for Engineers Case Study Assignment

As we are studying in the Week 7 material, for some inventions there is an overlap in the type of intellectual property protection that is available. More specifically, there are many patent-eligible inventions that could, in the alternative, be kept as trade secrets. In such cases, choosing between patent protection and trade secret protection requires a careful examination of the invention and the legal criteria of both areas of intellectual property protection and often comes down to a business decision. For business leaders, it is critical to understand the differences between these types of intellectual property protection and to be able to articulate the rationale behind a decision to support one mode of intellectual property protection over the other.

For this Case Study assignment, you will choose an existing invention or technology that is both patent and trade secret eligible. (Possibilities to focus on include formulas, processes, methods and techniques. I have provided an example below.) You will be asked to analyze your technology in terms of its patentability and also in terms of its ability to be kept as a trade secret. You will then be asked to choose a mode of intellectual property protection (i.e., patent or trade secret protection) and defend your decision based on the type of invention/technology and the legal standards of both areas of the law. You should include the factors discussed in the Week 7 lecture notes in your analysis.

Assignment

Part A - Due By the end of Week 8 (July 12, 2020 by the end of the day)

Choose your invention or technology.

Choose an existing invention or technology as the focus of your project. Be sure to analyze the elements required for patent protection to determine that it is in fact, patent eligible. See Week 7 notes titled: “Patents, Patentable and Non- patentable Subject Matter” and “Standards for Obtaining Patent Protection.” Next, analyze the elements required for trade secret protection to determine that the invention is trade secret eligible. See Week 7 notes titled: “Trade Secret Law” and “Losing Trade Secret.Protection.” (Note - your invention may already be covered by a patent or protected as a trade secret. In this case, you must still provide an analysis of patent and trade secret eligibility in your final paper.)

Using the Dropbox provided in Week 8, submit no more than one page describing the invention you have chosen and briefly describe how the invention may be appropriate for both patent and trade secret protection.

For guidance, please consider the following example of a technology that is both patent and trade secret eligible:

Trexel, Inc., a company in Wilmington, MA, has in recent years dominated the field of foam molding through its MuCell microcellular foam technology. In general, microcellular processes differ from traditional foaming processes which produce bubbles of .25mm and result in a significant loss of strength of the material.

On the other hand, microcellular foam can have 100 bubbles across one mm thickness, thus enabling these foams to retain their mechanical properties even as density is reduced. Moreover, due to the non-hazardous nature of this foam- generating process, plastics that are created using the microcellular process can be recycled, thus reducing the carbon footprint of these materials.

This process has many useful applications, including in the automotive industry. Trexel, Inc. has been a leader in this area, holding US patent No. 6,884,823 issued in 2005 and 8, 137, 600 issued in 2012.

Notice that Trexel’s process is patent eligible as the invention focuses on a process, which is one of the statutory categories of patentable subject matter. In addition, note that the process is not an abstract idea, law of nature or physical phenomena and thus, is not precluded from patentability. This process is also capable of being protected as a trade secret as it falls within the scope of trade secret subject matter. (Your explanation will include much more detail. I have only provided a general overview as an example.)

If you cannot think of an invention or technology, let me know and I can provide you with a list to choose from.

---------------------------------------------------------------------- Part B - Due By the end of Week 9 (July 19, 2020 by the end of the day)

Your role as a manager:

Once you have chosen an invention or some technology that meets the criteria outlined in Part A, you must then step into a management role and make a determination of whether the technology should be protected as a trade secret or whether the company should pursue patent protection.

To complete the assignment, please respond to the following questions (See my note below regarding the required format.):

1. Explain how the product or technology you have chosen can be protected as a trade secret. Be sure to analyze the technology you have chosen applying the definition and standards of trade secret protection as defined in the Uniform Trade Secrets Act. (15 points)

2. Discuss in detail the specific procedures and steps that would be necessary for the company to take in order to establish and maintain trade secret protection. Be sure to discuss any necessary actions with regard to interactions with employees and third parties. (15 points)

3. Explain how the technology is patentable. Here, be sure to discuss the standards of patentability, the categories of patentable subject matter and the areas of subject matter that are not patentable, such as abstract ideas, laws of nature and physical phenomena. Explain which statutory category(ies) the product or technology would fall into. (30 points)

***An important note about patentability. As you know, in order for an invention to receive patent protection, it must be novel and non-obvious. These are legal standards that require an advanced and thorough patent search and analysis to establish. Do not get hung up on these requirements. Instead, you should discuss the standards and simply make an assumption that the product or technology can be patented, in that it is novel and non-obvious. I am not asking you to perform a patent search or give a definitive response as to whether the invention is in fact novel and non obvious. Patent searching and analysis takes years of training and I am absolutely not asking that you undertake this role.

4. Finally, make a recommendation to the company’s business development and strategy team regarding which method of intellectual property protection the company should pursue. Should the company pursue patent protection or proceed with trade secret protection? Be sure to discuss and analyze the differences between the two types of IP protection and explain the benefits as well as the drawbacks of each strategy as they relate to your product or technology. (40 points)

Required Format Your case study should be 3-5 pages and should answer questions 1-4 as listed above. Please follow the format of the questions. Respond to the each question, numbering your responses as corresponding to the four questions. Be sure to include an explanation of the technology. Please use 12 point font, one and a half or double spaced and do not exceed the page limit.

This assignment is worth 30% of your final grade.