Monthly Archives: June 2016

Brexit Stage Right

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KEEP_CALMThe Brexit referendum has raised a number of issues related to disentangling United Kingdom from the European Union.  Intellectual Property owners are understandably concerned about their European Intellectual property.

 

Patents

There is no need to be concerned about European Patents.  The European Patent Convention predates the 1993 establishment of the European Union.  Among the 38 contracting states to the EPC, several are not members of the EU: Albania, Iceland, Liechtenstein, Lithuania, Macedonia, San Marino, Serbia, Switzerland, and Turkey.  Upon the departure of United Kingdom from the EU, it can continue its membership in the EPC.

The United Kingdom leaving the EU will impact the proposed new Unitary Patent system and the Unified Patent Court. The United Kingdom was one of the jurisdictions required to ratify the Agreement on the Unified Patent Court, and London was one of the agreed locations for the Unified Patent Court.

Trademarks

With respect to the European Union Trade Mark system, the United Kingdom’s departure from the EU will likely affect the geographic scope of European Union Trademarks.  Some provision will be made to continue the protection of European Union Trademark registrations in the United Kingdom post-separation.  There will be at least two years before the separation occurs, and during which this transition issue will certainly be resolved.  For new applications, applicants should consider a Madrid Protocol application designating both the Community Trademark and the United Kingdom.

Designs

With respect to Community Designs, the United Kingdom’s departure from the EU will likely affect the geographic scope of Community Designs.  Some provision will be made to continue the protection of designs in the United Kingdom post-separation.  As pointed out above, it will be at least two years before the separation occurs, and during which this transition issue will certainly be resolved. For applications filed today, applicants should consider filing both United Kingdom and the European Community designs applications.  If the United Kingdom joins the Hague Convention, this double filing will become easier.

Is the Inevitable Disclosure Doctrine Inevitable?

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An important feature of the recently enacted Defense of Trade Secrets Act was that it left state trade secret law intact.  This meant that states that had adopted the Inevitable Disclosure Doctrine could continue to apply it, and states that had not adopted the Doctrine (e.g., California Bayer Corp. v. Roche Molecular Sys.,
Inc., 72 F.Supp.2d 1111 (N.D. Cal. 1999), and Florida Del Monte Fresh Produce Co. v. Dole Food Co., Inc., 148 F.Supp.2d 1326 (S.D. Fla. 2001).) were not forced to adopt it.  This Doctrine, established by the Seventh Circuit in PepsiCo, Inc. v. Redmond, 54 F.3d 1262, 1269 (7th Cir. 1995), allows a trade secret owner to prove a claim of trade secret misappropriation by demonstrating that the defendant’s new employment will inevitably lead him to rely on the plaintiff’s trade secrets.

It would appear that the Inevitable Disclosure Doctrine is but one way of proving a “threatend missapproiation” prohibited by Mo.Rev. State. 417.455 of the Missouri Uniform Trade Secrets Act.  However the status of the Doctrine of Inevitable Disclosure in Missouri is unclear.  At least three cases discuss the Doctrine, and while they found it inapplicable under the particular circumstances, did not reject the Doctrine outright.  See, Lasco Foods,, Inc. v. Hall & Shaw Sales, Mktg. & Consulting, L.L.C., No. 4:08cv01683, January-February 2015 / 33 2009 WL 3834099, at *2 (E.D. Mo. Nov. 16,2009); Carboline Co. v. Lebeck, 990 F.Supp. 762, 767-68 (E.D. Mo. 1997), and H & R Block Eastern Tax Servs., Inc. v. Enchura, 122 F. Supp. 2d 1067, 1075 (W.D. Mo. 2000).

In H & R Block Eastern Tax Servs., Inc. v. Enchura, 122 F. Supp. 2d 1067, 1075 (W.D. Mo. 2000), the district court indicated that “inevitability alone is insufficient to justify injunctive relief; rather, demonstrated inevitability in combination with a finding that there is unwillingness to preserve confidentiality is required.” Other factors that might be analyzed in determining whether to apply the doctrine:include:

  • whether the employee will have a decision making role at the new employment;
  • whether the responsibilities at the respective jobs are similar;
  • whether the employee will be developing new products; whether the employee was involved in the creation of the trade secrets at issue; and
  • whether the trade secrets are easily subject to memorization.

It would seem that if in fact the disclosure of a trade secret could be shown to be inevitable, then relief under the Missouri Uniform Trade Secret Act (Mo.Rev. State. 417.455), which authorizes injunction again threatened misappropriation would be appropriate. Such an injunction would even appear to be appropriate under the Defense of Trade Secrets Act, which requires that “conditions placed on such employment shall be based on evidence of threatened misappropriation and not merely on the information the person knows” would also be appropriate.  18 USC 1936(b)(3)(A)(i)(I).