From the halls of academia... John Quick, Controlling Pandora's Box: the Need for Patent Protection in Transgenic Research, 15 U. Miami Bus. L. Rev. 303 (Spring-Summer 2007) surveys the four current means of protecting genetically modified organisms:
Trade secret law is an attractive mode of protection since no eligibility requirements for protection exist. Moreover, with a potentially limitless timeline, it offers permanent protection to the inventor. Trade secret law views protectable subject matter through a functional definition. A trade secret can include almost anything so long as the company maintains the subject matter as a secret, it is not commonly known by competitors, and it would provide the company with a competitive advantage. The creation of a trade secret rather than a patent may be desirable to a company because unlike patents, a trade secret does not require the publication of the subject matter within eighteen months of the application for patent protection. Furthermore, the extent of patent protection appears to be under attack in at least one jurisdiction. The First Circuit Court of Appeals limited the Doctrine of Equivalence, holding that by narrowing a claim to obtain a patent, prosecution estoppel serves as a bar to suit against every equivalent claim of that nature.
The United States Supreme Court, however, has quashed this movement for the moment. In so doing, the Court announced that while prosecution estoppel requires that claims be interpreted in light of underlying proceedings in the patent office during the application process, a narrowing amendment made during patent prosecution does not bar all equivalents from suit. The use of trade secret protection would have far reaching consequences on the scientific community, as well as the population at large. If trade secret protection becomes the preferred means of transgenic research protection, there would be a strong incentive for scientists not to disclose their breakthroughs. Moreover, a company would have to shift money that could be used for innovation and discovery to the protection of the trade secret. While this means of protection will maximize the profit potential of a researcher or company, it will consequently slow the exchange of information within the scientific community. Furthermore, the use of trade secrets will create unnecessary waste within the scientific community by requiring that separate researchers expend otherwise unnecessary time and money in duplicating a particular trade secret. Similarly, the existence of trade secrets will harm the public as a whole. Allowing one company to establish an indefinite monopoly on a scientific discovery effectively bars the vast majority of the population from access to the discovery.
