Peter Pasta works in the R&D Department of Setonia Co. of North Burgundy, NJ as a staff engineer. Setonia has recently developed a brand new product which combines the best features of a Blackberry, IPod and IPhone. Setonia's management decides not to seek patent protection for their new product they call Purple-Plum-Phone or P3 for short. Instead, Setonia decides to maintain the P3 as a trade secret until the launch of this new product. The manufacturing details will also be maintained as a trade secret after launch.
Peter decides to resign from working for Setonia and to start working for Whoo-Rah Inc. of West Brunswick, NJ as an engineer at the director level (a promotion). Whoo-Rah also is in the business of selling electronics such as cell phones, pda's and mp3 players. Just before Peter leaves Setonia, Peter has an exit interview with Setonia's HR department during which Peter is reminded that when he started employment at Setonia he signed an employment agreement that included confidentiality provisions. As such, Peter was reminded that anything he learned about the P3 during his employment must remain confidential.
The P3 is launched to great success. In fact, during the first few months that the P3 is on sale, Setonia has to limit the amount of P3's that a person can purchase to one to ensure that all customers can purchase a P3.
Whoo-Rah has been working on developing their own product that combines the best features of the Blackberry, IPod and IPhone. Unlike Setonia, Whoo-Rah has been filing for patent protection for their yet to be launched product. One of these patent applications has recently been allowed and is due to issue as a patent in the next couple of months. In addition, other patent applications are still being prosecuted, but Whoo-Rah's Patent Attorneys tell them that the applications are proceeding smoothly through the U.S. Patent Office. Whoo-Rah has also heard rumors that Setonia may be about to launch a competitive product, but they knew of none of the details of this product until it was launched.
If you are the IP Counsel of Whoo-Rah, how would you advise them to handle the situation? What, if anything, can Setonia do to try and protect their newly launched P3?
Whoo-Rah has already filed for patent for the product that combines the best features of the Blackberry, IPod and IPhone. The term of a new patent commences from the date when the company files for a patent and continues for 20 years from the date the application was filed for in the office of the United States Patent and Trademark ...
The answer provides you an excellent discussion on patent law.