Reverse engineering (now does the title make sense?) is a common and legitimate business practice. \u00a0The recent federal Defend Trade Secrets Act specifically excludes reverse engineering from the definition of misappropriation. \u00a018 USC \u00a71839(6) (“the term ‘improper means’ . . . (B) does not include reverse \u00a0engineering.”). \u00a0 While the Uniform Trade Secrets Act (some form of which is in force in 48 states and the District of Colombia) does not expressly mention reverse engineering, the Comments to Section 1 adopt the Restatement of Torts position that “Discovery by ‘reverse engineering’, that is, by starting with the known product and working backward to find the method by which it was developed” is not an improper means of acquiring a trade secret (provided the acquisition of the product was by a fair and honest means).<\/p>\n
Thus if an unpatented product is acquired legally, and there is no enforceable promise not to reverse engineer, the owner of the product is free to analyze and copy the product. \u00a0 Some courts have enforced \u00a0“no reverse engineering” clauses[1]. \u00a0However after Impression Products, Inc. v. v. Lexmark International, Inc,<\/a>\u00a0 such restrictions may not be enforceable beyond the first purchaser, and in any event, at least some courts have found such “no reverse engineering” clauses unenforceable, for example where they interfere with the fair use of computer software.[2]<\/p>\n A business including reverse engineering as part of its product development process should be careful not to cast its own activities in a false light. \u00a0Emails and other internal documents referring to the business’ reverse engineering efforts as “knocking off” or similarly disparaging terms, may unfairly portray the company and its products should there be litigation in which the these documents come to light. \u00a0A business should instead accurately characterize its efforts as developing non-infringing competitive products, of which reverse engineering is just one part.<\/p>\n <\/p>\n [1] See K&G Oil & Tool Service Co. v. G&G\u00a0Fishing Tool Service<\/em>, 158 Tex. 94, 314 S.W.2d 782, 785-86 (1958)(enforcing a negotiated agreement not to reverse engineer);\u00a0Pioneer Hi-Bred Int\u2019l, Inc. v. DeKalb Genetics Corp.<\/em>, 51 U.S.P.Q. 1987 (S.D. Iowa\u00a01999)(enforcing \u201cbag tag\u201d restrictions on use of seed for research purposes).<\/p>\n [2] See\u00a0Vault Corp. v. Quaid Software Ltd., 847 F.2d 255 (5th Cir. 1988).<\/p>\n <\/p>\n","protected":false},"excerpt":{"rendered":" Reverse engineering (now does the title make sense?) is a common and legitimate business practice. \u00a0The recent federal Defend Trade Secrets Act specifically excludes reverse engineering from the definition of misappropriation. \u00a018 USC \u00a71839(6) (“the term ‘improper means’ . . … Continue reading