Better Living Through Chemistry
(Chemical Trade Secrets, That Is)
by Steve McDaniel, JD, PhD
Technology Litigators
that the use of a commercially-available
ingredient, as-is off-the-shelf, but with the
label removed and put to a new purpose
is a protectable trade secret! Similarly,
although your publicly-available MSDS may clearly
state that such and such ingredient is in your product
formulation, the fact that
you secure that ingredient
from a particular supplier
that works while other supplier’s products do not work
or work as well IS a protectable trade secret.
Formulae that have been
found protectable in at least
one state court as a trade
secret include . . . an edible,
apple-based shellac . . . ink
formulas . . . sealants for use
in nuclear power plants . . .
customized resin formulations specific for adhesive
sheeting . . . polyurethane
foams especially built for
lightweight marine craft . .
. dye hues and color variations . . . recipes for pre-dipped or coated electrical
insulation gloves . . . “
pearl-izing” glass beads . . . to
name a few. What I glean
more as a chemist than a
lawyer from such cases is
that, while the polymeric
coating I am using may be
well-known in the industry
and perhaps unpatentable,
my tweaks of such formulas
to fit the coating into a particular application likely ARE protectable
trade secrets. And, as a lawyer, I know
that such assets can form the basis of
very lucrative licensing agreements struck
with customers and competitors that DO
NOT KNOW the nuances that are used.
Processes for formulating our witches’
brews that have been found to qualify as
trade secrets include . . . processes for mak-
ing gas-permeable polymers for soft contact
lenses . . . processes for packaging resulting
in longer shelf-life for chemical products . .
In this space, we have spent consider- able time discussing the laws of trade secrecy. That’s what us lawyers do –
geek out on the law. But, if you look up
under my crisp Armani suit (yeah, like I
have one!), what you will find is the rumpled and stained lab jacket of a seasoned
chemist with years of bench experience
(more than I care to recall). And, what
I really like to “geek out” about is chemistry. So bear with me as I discuss my
heart-of-hearts with a legal twist about
protecting our chemical inventions.
With the hard-won position that such
reviews are of significant value for my
trade secret audit clients, I have routinely looked at trade secret cases with the
chemist’s perspective. It turns out that
it’s kinda easy to find all sorts of chemical trade secrets cases that give us paint
guys an insight into what might be protectable or not. These are just anecdotal,
but hopefully they will stimulate your
imagination as to what things you are doing that you might NOT want to share
at the American Coatings Show social
hour with your buddies from other companies (stick to lying about the fish you
are catching or the beer-goggled romantic
conquests you seem to recall having had
in college). And remember, as we have
discussed in the past, trade secret law is
vastly a creature of state law, so the cases
from which we pluck these anecdotes
come from all over the U.S. map, not
necessarily the state in which you operate
your chemical business.
The common wisdom is that a mixture
of commonly-known chemicals (such as
solvents, resins, fillers, etc. in a latex paint)
will not qualify as a trade secret. But,
specific proportions, acceptable ranges
of concentrations, orders of addition, pot
times, etc. might very well be protectable.
Get this, more than once courts have held
. generally, processes at least as varied and
as numerous as the products we sell. The
process has to be substantive, of course,
and can’t just be “emphasizing care in mixing well-known ingredients.” But, it doesn’t
have to rise to the requirements for novelty
and unobviousness needed to be patentable
either. So, while merely cautioning to “mix
24 | Coatings World
www.coatingsworld.com
December 2012
