Comments on: Can you sue under trade secret law if you registered the plant varieties? http://patentmaze.cougarlaw.com/blawg/2004/12/08/can-you-sue-under-trade-secret-law-if-you-registered-the-plant-varieties/ Sun, 05 Feb 2012 13:22:16 +0000 http://wordpress.org/?v=2.5.1 By: Carol http://patentmaze.cougarlaw.com/blawg/2004/12/08/can-you-sue-under-trade-secret-law-if-you-registered-the-plant-varieties/#comment-49 Carol Mon, 14 Mar 2005 17:52:29 +0000 http://patentmaze.cougarlaw.com/blawg/?p=77#comment-49 The Court said that trade secrecy is not per se in conflict with the disclosure requirements of the PVPC. Rather, it is a fact specific determination. Advanta (the defendent) was attempting to have the case decided on the basis that PVPC and trade secrecy law are in conflict, meaning that, under principles of U.S. law, PVPC law is controlling. Unless appealed by Advanta or settled out of court, a trial court will now examine the facts of the case to see if Pioneer really had a trade secret or not. I don't see a conflict with TRIPS because a contention of trade secrecy by a non-national would be treated similarly - did the disclosure in France or Australia or whereever extinguish protection under trade secrecy. As nationals can and do file in other countries, it would seem that those disclosures would also be considered by a court. Thus, if Pioneer filed for PBR protection in France, the public disclosure from that filing would be considered as well. Personally, I think the court was wrong and that Pioneer should not be accorded the opportunity to claim trade secret, but I am a patent lawyer, not a judge. The Court said that trade secrecy is not per se in conflict with the disclosure requirements of the PVPC. Rather, it is a fact specific determination. Advanta (the defendent) was attempting to have the case decided on the basis that PVPC and trade secrecy law are in conflict, meaning that, under principles of U.S. law, PVPC law is controlling.

Unless appealed by Advanta or settled out of court, a trial court will now examine the facts of the case to see if Pioneer really had a trade secret or not.

I don’t see a conflict with TRIPS because a contention of trade secrecy by a non-national would be treated similarly - did the disclosure in France or Australia or whereever extinguish protection under trade secrecy. As nationals can and do file in other countries, it would seem that those disclosures would also be considered by a court. Thus, if Pioneer filed for PBR protection in France, the public disclosure from that filing would be considered as well.

Personally, I think the court was wrong and that Pioneer should not be accorded the opportunity to claim trade secret, but I am a patent lawyer, not a judge.

]]> By: Alex Thurgood http://patentmaze.cougarlaw.com/blawg/2004/12/08/can-you-sue-under-trade-secret-law-if-you-registered-the-plant-varieties/#comment-50 Alex Thurgood Sun, 06 Mar 2005 06:19:57 +0000 http://patentmaze.cougarlaw.com/blawg/?p=77#comment-50 I haven't read the decision in detail, but it does seem an amazing assumption to make by the court that because the PVPC procedure does not need to be disclosed to the public or have the same enablement requirements as a patent, then a PVPC application does not break the secrecy coverage. The PVPC grants a protective right for a plant variety, the characteristics of which have to be described and meet certain criteria defined by the law. The existence of the PVPC is made public. I seem to recall that the US public have a fundamental right to access to certain federal records, but I don't seem to recall that PVPC procedures were on the excluded list of such information. Of course, I'm looking at this from a European perspective as a European attorney. In France, where I work, the data that needs to be provided to obtain a PVP is publicly accessible, for example the European Community PBR Office has this page : http://www.cpvo.fr/default.php?res=1&w=1334&h=848&lang=en&page=document/accesdoc/accesdoc.htm This then begs the question : if foreign (non-US applicants) can not benefit from the Court's interpretation of secrecy, then is the Trade Secrecy protection afforded under this interpretation TRIPS compliant, in the sense that a US jurisdiction will not offer the same treatment to a non-US plaintiff as to one resident in the US ? Regards, Alex Thurgood I haven’t read the decision in detail, but it does seem an amazing assumption to make by the court that because the PVPC procedure does not need to be disclosed to the public or have the same enablement requirements as a patent, then a PVPC application does not break the secrecy coverage. The PVPC grants a protective right for a plant variety, the characteristics of which have to be described and meet certain criteria defined by the law. The existence of the PVPC is made public. I seem to recall that the US public have a fundamental right to access to certain federal records, but I don’t seem to recall that PVPC procedures were on the excluded list of such information. Of course, I’m looking at this from a European perspective as a European attorney.

In France, where I work, the data that needs to be provided to obtain a PVP is publicly accessible, for example the European Community PBR Office has this page :

http://www.cpvo.fr/default.php?res=1&w=1334&h=848&lang=en&page=document/accesdoc/accesdoc.htm

This then begs the question : if foreign (non-US applicants) can not benefit from the Court’s interpretation of secrecy, then is the Trade Secrecy protection afforded under this interpretation TRIPS compliant, in the sense that a US jurisdiction will not offer the same treatment to a non-US plaintiff as to one resident in the US ?

Regards,

Alex Thurgood

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