In her Strategic Thinking column on GreenBiz.com, Nancy Edwards Cronin recommends Growing the Eco-Patent Commons to Truly Promote Green Innovation. While lauding the objectives of this green initiative, she suggests that the Eco-Patent Commons itself is in need of some innovation if it truly hopes to accomplish its goal: sharing useful environmental technologies for "the greater good."

The problem is that the project includes only "patents" and not the undisclosed innovations and trade secrets within the intellectual property of companies and independent inventors that have not yet been patented. Many of those inventions might better be published now to promote the progress of science and the useful arts for a sustainable environment and ecology for the future.

To compensate for these drawbacks and make the Eco-Patent Commons as useful and powerful as it can be, the initiative requires expansion to offer truly recent inventions that have not spent years in the patent application process. This involves widening the scope of the initiative to include non-patented inventions that have yet to be marketed and made public.

One way to make these inventions available is through enabled invention disclosures. An enabled invention disclosure (also called “defensive publication” or “technical bulletin”) is a written description of an invention that ideally has the same degree of detail as an issued patent. Therefore a well-written invention disclosure provides sufficient information to the reader to understand and use the invention.

Many companies successfully use enabled invention disclosures as part of their intellectual property (IP) strategies. Companies frequently have inventions that they do not wish to patent because the patent process is so expensive, including invention development costs, legal preparation and patent prosecution fees. However, companies also wish to prevent competitors from patenting those same inventions.

By using enabled invention disclosures to publish the invention, companies accomplish both goals: they save the cost of patenting but they also establish a “prior art bar” to obtaining the patent and make it impossible for competitors to claim it the invention as their own. Several Web site forums exist for publishing inventions, including www.ip.com and www.researchdisclosure.com.

The Eco-Patent Commons should be expanded to include these enabled invention disclosures. Many inventions that companies deem non-strategic for patent application and instead decide to publish may be excellent candidates to be donated to the Eco-Patent Commons. These published inventions would be truly new, fresh and useful -- a good first step to creating the true springboard for green innovation that the Eco-Patent Commons was meant to be.

We couldn't agree more.

As indicated in our original post about the Eco-Patent Commons, IP.com would really like to contribute to this very worthwhile initiative by providing the publishing platform to broaden the scope of the project to include innovations and inventions useful to the environmental movement well beyond those patents that have been contributed by the project's founding companies, some of which are already using the IP.com Prior Art Database. We've got technologies available that could very quickly take this green initiative to a whole new level of global participation.

Let's discuss.

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It's interesting to see the growing number of Fortune 500 companies and Global 1000 businesses with blogs by CEO and other senior level executives who are blogging for their companies.

Today, we discovered another, The Manufacturing Industry Blog by Lynette McTigue, the Global Industry Marketing Manager for Xerox Global Services. On that corporate blog, Xerox highlights current industry themes and challenges, and how manufacturing organizations use document-related concepts and technologies to reduce costs, improve client relationships and increase productivity.

What caught our attention was this link to Enterprise Security – Tightening Your Grip on Trade Secrets, a white paper by David Drab, Xerox's thought leader on security,  He makes some excellent points about managing trade secrets we'd like to share with our readers here.

In today's world, if trade secrets are not nailed down they are more likely to walk out the door and into the hands of a competitor. Plain and simple they are at high risk, and perhaps someone's job is or will be as well. This is the way it works:

A company hires an employee because of her education, knowledge and expertise. The company pays her to invent, to create new ideas that ultimately add value in profitability and corporate growth. She does her job well, then after a half dozen years or so, greener pastures are on the horizon--bigger earning potential, more prestige, career fast-tracking. She markets the idea she was paid to create in pursuit of fame and fortune. She accepts the offer she can't refuse from a competitor and before too long the idea becomes a new product launch. Her former company files a theft of trade secrets lawsuit and ownership litigation ensues.

Many variations of this scenario unfold each day in enterprises across the globe providing endless drama. They represent the tip of the iceberg in spectrum of trade secret theft and misappropriation that extends far beneath the surface into high-stakes espionage. Trade secret litigation is a public spectacle. It is very costly and time intensive, not to mention the negative impact on reputation and shareholder confidence that results. Unfortunately, many of these kinds of cases could have been avoided had there been an effective trade secret management system in place that explicitly described company policies, procedures and protocols governing the identification, handling and use of trade secret information. An organization that exhibits a languid posture towards trade secret management subtly diminishes the importance of ownership, use and control. A person with authorized access can more easily rationalize that ownership is discretionary even though signed confidentiality agreements may be in place. The corporate message simply is not clear, it is not concrete and it is not convincing. Without a management system and definitive handling protocols, trade secrets are vulnerable and at high risk.

Many of our clients use a Publication Clearance System as a component of their  companies' Trade Secret Management. The pub clearance is one important part of filtering and identifying potential trade secrets before anyone in the company inadvertently discloses a trade secret to the public. Another key component of an effective innovation protection system is a secure repository for managing and protecting access to critical trade secrets.

What does your company use to protect its valuable trade secrets? If you're not sure, or wonder if adequate systems are securing your innovations, you may want to contact us for a complimentary review of how your trade secrets are safeguarded. You might also call David Drab at Xerox, who clearly understands the problems and solutions for trade secret management. Heck, with so much at stake for your company, you should probably give us both a call to see how we can help.

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Nolo.com outlines what every business owner should know about trade secret law.

What is a trade secret?

What types of information can trade secrets protect?

What rights does the owner of a trade secret have?

How can a business protect its trade secrets?

How can a business enforce its rights if someone steals or improperly discloses confidential information?

Is stealing trade secrets a crime?

The most notorious recent case of a conviction for stealing trade secrets involved a former employee of DuPont, who is now serving an eighteen month sentence after pleading guilty to downloading thousands of documents from the company's databases when he was about to leave the company--with trade secrets worth an estimated $400 Million to the company.

Almost every few days now, it seems, we read news of some former executive of a company, or scientist working in research and development, being accused of stealing trade secrets.

Just last week, it was reported that a senior research and development associate at a Lubrizol research facility in Brecksville, pocketed at least $170,000 in exchange for trade secrets from 2001 to 2007, according to the information filed in criminal court. Apparently, Lubrizol employs a variety of protective measures to prevent trade leaks, including confidentiality agreements, according to the company.

In most of these cases, unauthorized access and misappropriation of trade secrets is discovered by forensic investigation only after the suspected theft is discovered. You'd think that big companies with significant assets in trade secrets would use the latest solutions for trade secret management. The objective should be to protect the company's trade secrets from misappropriation in the first place, not just to catch criminals who steal intellectual property left unsecured.

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Lumenis is purportedly Israel's largest medical device company with more than 1,000 employees worldwide. Apparently, some of its former employees are now with another company, Alma Lasers, "in what has become a highly competitive industry and business environment," according to Lumenis CEO Dov Ofer.

In June 2007, Lumenis filed an action against Alma for patent infringement in the US District Court in Chicago, Illinois claiming that Alma infringed seven of Lumenis' patents in the design of the Harmony product. Lumenis initiated the Chicago litigation by filing suit against Alma Lasers on June 28, 2007.

On January 25, 2008, Alma filed counterclaims and, among other things, asked the Court to declare six of the seven Lumenis patents unenforceable due to inequitable conduct in procuring those patents. Alma alleged that, when applying for those six patents, the applicants breached their duty of candor, good faith and honesty to the PTO and engaged in inequitable conduct by making false representations to the PTO and by failing to disclose material prior art to the PTO. Lumenis denied the allegations.

Meanwhile, in December 2007, Alma submitted 22 prior art references to the PTO for consideration with respect to the seven Lumenis patents. Subsequently, the PTO found a "substantial new question of patentability" with respect to each of the seven patents, and commenced reexamination of them. With respect to one of those patents, the PTO, on February 8, 2008, issued an Office Action rejecting 26 claims of the patent as obvious or anticipated by the prior art. On February 21, 2008, the District Court ordered the litigation stayed pending the PTO's reexamination.

In a press release issued on March 26, 2008, Alma seemed pleased to report that: (1) the U.S. Patent and Trademark Office in Alexandria VA ("PTO") has decided to reexamine all seven of Lumenis's patents that are at issue in the litigation, and (2) the Court has stayed the litigation, pending reexamination of the patents.

Also on March 26, 2008, Lumenis issued its own press release announcing that the company had that very day filed a complaint in the Tel Aviv District Court in Israel against Alma Lasers Ltd. and its four founders, Ziv Karni, Yoav Avni, Nadav Bayer, and Ivgeni Kodritzki, all former employees of Lumenis, claiming misappropriation of Lumenis trade secrets and technology and for the use of such technology in Alma's primary Harmony products, which are sold worldwide. Lumenis has requested relief from the court in the form of an injunction against the use of such core technology by Alma in its products and for monetary damages in the amount of 200 million shekels based on the profits earned by Alma and its founders from the utilization of such Lumenis technology. Lumenis will also be filing a similar action against Alma Inc., the US subsidiary and distribution arm of Alma, in the Federal Court in the US.

This new action alleges that Alma went even further than mere patent infringement -- it alleges outright misappropriation of Lumenis technology that was developed by Lumenis over a long period of time and at Lumenis' great expense.

All of the above is reported verbatim from the press releases issued by the companies separately on March 26, 2008, which we've just pieced together to make some sense of the litigation of which both sides appear to be telling their part of the whole story. Anyway, both companies seem to want to get the news out, and we're happy to write about it here.

We're always looking for interesting patent disputes that turn on evidence of prior art and allegations of misappropriation of trade secrets. We'll keep you posted on this one. If either of the parties want to dispute the facts stated in their respective press releases, by all means feel free to have it out in the comments below. We're pleased to provide a forum for discussion of the patents on the merits.

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