Intellectual Property Boston College Law School February 13, 2008 Trade Secret – Part 3

Patent Ownership Rules Common law default rules –Hired to invent: company owns –Invented in shop: company gets shop right –Independently invented: employee owns

Non-Compete Agreements Some jurisdictions, unenforceable Other jurisdictions, reasonableness –Employer’s legitimate interests in protection –Employee’s interest in mobility –Public policy

Hypothetical Facts –Associate at a high-power Boston law firm –Valuable proprietary litigation techniques –Sign non-compete agreeing not to work for another Boston firm for 1 year Enforceable?

Trade Secret Remedies Remedies –Injunction –Reasonable royalty –Damages Actual damages Unjust enrichment Exemplary damages –Attorneys fees

Economic Espionage Act 18 U.S.C. § 1831(a) –Punishes individual who “(1) steals, or without authorization appropriates, takes, carries away, or conceals, or by fraud, artifice, or deception obtains a trade secret; “(2) without authorization copies, duplicates, … alters, destroys, photocopies, … transmits, delivers, … a trade secret; “(3) receives, buys, or possesses a trade secret knowing the same to have been stolen or appropriated, obtained, or converted without authorization …. ”

Administrative Assignment –Patents – through IV.B.1 – Subject Matter