Coatings World - JUNE 2013

Going Back to College,
to Trade Secrets Graduate Degree

by Steve McDaniel, JD, PhD Technology Litigators

In the last iPaint, we discussed the gregious and arguably greatest trade secret heist in history, the stealing of Rosalind Franklin’s x-ray diffraction data on the DNA double helix structure – where researchers at one university ripped off a researcher at another university, aided in the heist by a colleague of the victim. It did not speak well of university ethics and certainly brought into question university data protection procedures. Still, it’s hard to protect against an inside job, one with determined thieves and a Nobel hanging in the balance.

Man! I wish I could have represented Dr. Franklin. But, that was long ago (I would love to say “before I was born,” but sadly that would be stretching the truth a bit).

But, I have indeed represented plaintiff universities whose trade secrets have allegedly been stolen, and the battles were ugly. Conversely, I have defended those being sued by universities for allegedly stealing the academic trade secrets, and these skirmishes were messier still. Lots of money was spent, lots of high-dollar lawyers and experts were thrown into the fray, and lots of researchers’ time was gobbled up as witnesses rather than doing the lab work at which they were best. These were typical, down-and-dirty trade secret litigations, indistinguishable from those of commercial entities.

So, I am always amazed when I see from time to time scholarly discussion on whether or not academic institutions can own, maintain and profit from trade secrets. I am equally surprised to hear paint and coatings companies ponder on the advisability of doing research and development at universities for fear of disclosure of the company’s confidential information through perceived “ leaky-sieves” of academic laboratories.

Of course, academic institutions are bastions of freedom of exchange of information. It goes without saying that they rush to publish state-of-the-art science and engineering information. They absolutely must seek and obtain public funding to which public funding agencies they owe a duty to produce the information to the advantage of the public at large. And, they must train and matriculate students, graduate students, medical professionals, and post-doctoral fellows armed with the very latest information and techniques.

Just as certain, however, is that academic institutions have trade secrets which they protect as well as or better than most coatings companies. Frankly, they are pretty damned good at it. They have to be. Their very existence depends upon it. They thrive on grants, grants they will not get if the information is public. They attract topnotch faculty by assurances that the intellectual products issuing from these faculty will be commercialized and that there will be dollars to share. They themselves seek to own licensable IP, chiefly in the form of patents but not uncommonly in the form of know-how and show-how. And, if we are smart about doing so, we in the coatings industry can depend upon these academic drivers to protect our own confidential information.

In this short article, I would like to discuss how companies can take advantage of this unending source of economical and excellent research.

under the law, it will remain yours under the law if shared under appropriate agreements. And, you can prosecute anyone who illegally uses it. Even universities.

Let’s discuss a hypothetical in which PaintCo has developed a novel coating to detect corrosion on the substrate

Don’t Take IP From the
University, Give it To Them
Yep, just give it to them. Your best stuff.
Patented or not. Why? Because it’s yours
underneath the film. The in-house de-
velopment used a particular resin sys-
tem to prove up the concept. PaintCo
filed patent applications judiciously
in a number of commercially-relevant
countries. However, as commercial roll-
out was under way, PaintCo discovers
problems with the application of the