With patents coming under increasing scrutiny at the Patent Trial and Appeal Board (“PTAB”) in conjunction with changes to the patent laws brought about by the America Invents Act (“AIA”), more companies are considering whether to preserve their methods as trade secrets rather than seek patent protection.
A recent decision of the Wyoming Supreme Court reminds us that trade secrets may be defined in several ways – with the most narrow definition often applied in cases involving Freedom of Information Act or public records requests. The court in Powder River Basin Resource Council et al. v. Wyoming Oil and Gas Conservation Commission, Case No. 2014WY37, identified three possible definitions of trade secrets:
In interpreting a state statute regarding public records requests, the court adopted “the definition of trade secrets articulated by federal courts under the FOIA.” It further confirmed that its “definition requires that there be a ‘direct relationship’ between the trade secret and the productive process.” Id. ¶ 38. (internal quotations omitted).
Public records requests can be a significant source of pre-litigation discovery. While the “direct relationship” limitation may be demonstrated in the case of a method of production maintained as a trade secret, it does provide an additional obstacle for a company seeking to shield its trade secrets. It is certainly something that merits consideration when determining whether to use the patent or trade secret system for protection, particularly where trade secret method information must be disclosed to a regulatory body that could be subject to a public records or FOIA request.