Intellectual Property Report: July 2012

07/12/2012 / Intellectual Property Group



In the July Issue:

Are You Letting Your Trade Secrets Walk Out the Door Each Night?
By John A. Kvinge

Along with patents, trademarks, and copyrights, trade secrets form an important pillar of intellectual property protection.  Trade secrets are attractive to many companies because unlike a patent, they do not require public disclosure of the underlying invention, and they never expire as long as the information remains a secret.

At least 46 states have enacted some version of the Uniform Trade Secrets Act, which provides protection for information that “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.”  The Uniform Trade Secrets Act allows the owner of a trade secret to bring a lawsuit for misappropriation against someone who uses a trade secret obtained through improper means.


Jurisprudence Over Abstract Ideas Continues In CLS Bank v. Alice Corporation
By Glenna L. Gilbert

In a 2-1 split decision in CLS Bank v. Alice Corporation, the Federal Circuit held on July 9 that when – after taking all of the claim recitations into consideration – it is not manifestly evident that a claim is directed to a patent ineligible abstract idea, that claim must not be deemed an abstract idea under 35 U.S.C. § 101. In other words, “[u]nless the single most reasonable understanding is that a claim is directed to nothing more than a fundamental truth or disembodied concept, with no limitations in the claim attaching that idea to a specific application, it is inappropriate to hold that the claim is directed to a patent ineligible ‘abstract idea’ . . . .”[1] 

CLS Bank v. Alice Corporation presented, once again, the question of patent eligibility of an invention implemented by computers.


[1] CLS Bank Int’l v. Alice Corp. Pty. Ltd., No. 2011-1301, slip op. at 20-21 (Fed. Cir. Jul. 9, 2012).

Intellectual Property Department Attorneys:
Thomas J. Oppold

Robert C. Klinger



Ryan C. Smith


John A. Kvinge
Molly T. Eichten

Craig J. Lervick

Glenna L. Gilbert


Jose W. Jimenez

James P. Quinn


This alert is provided as a service to our clients and firm associates. While the information provided in this publication is believed to be accurate, it is general in nature and should not be construed as legal advice.