Imagine this scenario: you have invented a unique medical device, obtained a patent for it, and begun successfully selling it. To teach colleagues how to use your development, you invite them to a closed seminar, requiring them to sign a strict non-disclosure agreement (NDA)—claiming that everything they see here is a big company secret. This is exactly what Dr. James Elist, the creator of the well-known Penuma® implant, did. However, when one of the seminar attendees, Dr. Cornell, later helped create a similar product, a legal war erupted, reaching the U.S. Court of Appeals.
The central question of this case: can you sue someone for “stealing secrets” if those “secrets” are already described in your own public patents?
The court gave a clear and firm answer: no.
The logic here is simple but fundamental to all business. When you apply for a patent, the state enters into an agreement with you: you reveal to the entire world in detail how your invention works, and in return, you receive a monopoly on its use for 20 years. You cannot “have your cake and eat it too”—that is, obtain patent protection and simultaneously claim that these technologies are your trade secret. Once information appears in a patent, it becomes public domain. No non-disclosure agreement can turn what the whole world already knows back into a “secret.”
In this case, the plaintiffs attempted to sue for over $17 million, claiming that a competitor stole their technical ideas and list of tools. But the court found that the ideas were already in the patents, and the list of tools was simply emailed without any restrictions. Consequently, the million-dollar compensations for “stealing secrets” were overturned.
Furthermore, Dr. Elist tried to prove that he should be listed as a co-author on the competitor’s new patents. However, the court denied this as well. Since his ideas were already publicly known in medicine at that point, they are not considered a “sufficient creative contribution” to claim the title of inventor.
The plaintiffs’ only victory was a $1 million fine for trademark infringement. The competitor made a mistake: he didn’t just use the technology, but advertised his services using someone else’s brand name Penuma® without permission. Here the law proved inexorable—the brand name belongs to the owner, and using it to sell your services is not allowed.
This case is an important lesson for any entrepreneur: if you decide to patent your invention, be prepared for it to no longer be a secret. Protecting your business after this is possible only through a patent or trademark, but no longer through lawsuits about “stolen secrets.” Patent publicity is a one-way ticket.
Founder of Research & Patent group Intectica, author of patent algorithms for solving problems in the pharmaceutical industry, patent attorney certified in all intellectual property objects (Patents, Design, TM), with education in chemistry and law, chief expert of the patent institution of Ukraine UKRPATENT (1997-2004). Member of international organizations, including ECTA, PTMG, UAM, lecturer and blogger.
