An inventor develops a numerical control system that allows a computer program to control the complex operation of machine tools such as drill bits. One of the elements in the numerical control system is a trade secret available only from the inventor. The inventor would like to patent the system as a whole, but an inventor must generally disclose how the invention works in order to obtain a patent. Must this inventor completely disclose how the trade secret works in order to obtain a patent on the whole system? The Federal Circuit Court of Appeals said "yes" in White Consolidated Industries v. Vega Servo-Control. This Note first compares trade secret protection with patent protection and then evaluates the White court's resolution of the conflict between trade secret law and patent law. The Note concludes that the court's holding, though consistent with patent law, will unnecessarily deter public access to valuable information by discouraging inventors from patenting inventions with trade secret components. The Note then considers possible solutions to the dilemma faced by an inventor who wishes to patent an invention incorporating a trade secret. The Note also evaluates solutions the White court could have considered and analyzes copyright protection as an alternative to trade secret protection.
Ellen L. Weber,
Patenting Inventions That Embody Computer Programs Held as Trade Secrets—White Consolidated Industries v. Vega Servo-Control, 713 F.2d 788 (Fed. Cir. 1983),
59 Wash. L. Rev.
Available at: https://digitalcommons.law.uw.edu/wlr/vol59/iss3/9