In this blog, Sand, Sebolt & Wernow partner and experienced patent lawyer Howard Wernow answers questions related to patent infringement and trade secrets and how it relates to reverse engineering.
Walk into a hardware store, buy a competitor’s latest power tool and tear it down to its bare gears in a workshop. Is that industrial espionage, patent infringement or simply smart engineering? Is reverse engineering legal? The answer depends on what type of intellectual property protects the product. Such reverse engineering may be lawful under trade secret law, but it is not a defense to infringement of a valid utility patent.
What Is Reverse Engineering?
Reverse engineering is the process of starting with a known product and working backward to understand the design, structure, function or composition of the product. Under the Uniform Trade Secrets Act (“UTSA”), reverse engineering is generally considered a proper means of discovering information, as long as the product was obtained lawfully and no duty of confidentiality, contract restriction, theft, hacking or other improper conduct is involved.
Currently, almost every State has adopted a version of the UTSA.
Reverse Engineering and Patent Infringement
To understand whether reverse engineering is a legal defense, it helps to begin with what it cannot protect against: a valid, active utility patent.
If an invention is protected by a valid, active utility patent, reverse engineering the patented product does not create a legal safe harbor or defense to claims of patent infringement. In the hardware store example, a person who buys a power tool, takes it apart, learns how the patented technology works and builds a clone that uses or even simply mimics the patent-protected features may still commit patent infringement. It does not matter that the person figured out the mechanics independently; the patent itself is the “blueprint”. The patent publicly discloses the details of the invention or technology in exchange for a limited right to exclude others from making, using, selling, offering to sell or importing the claimed invention or technology.
Patents Create Temporary Legal Monopolies
Patents grant inventors a temporary legal monopoly for as long as the patent remains valid and enforceable. In exchange, the inventor must publicly disclose how the invention works. Because patent rights can be enforced regardless of independent or reverse engineering, good faith and independent discovery are generally not defenses to patent infringement. A reverse engineer who discovers patented features by studying a lawfully purchased product may still infringe if they make, use, sell, offer to sell or import a product covered by the patent claims.
For that reason, reverse engineering a patented product can create significant risk of liability for patent infringement. Even if the reverse engineer never reads the patent and never steals confidential information, copying technology that falls within the patent claims is still patent infringement.
With all of this in mind, it is still lawful to use reverse engineering in the patent context. For example, a patent owner may purchase a competing product on the open market and analyze it to determine whether the product infringes the patent owner’s claims.
Reverse Engineering and Trade Secret Law
Trade secret law takes a different approach to reverse engineering. If an invention or process is not protected by a valid patent and is instead protected as confidential “secret sauce,” competitors may be able to discover that information through lawful reverse engineering. Trade secret law protects against misappropriation of the protected information (the “trade secret”), not against every form of independent discovery.
For example, if a company keeps a manufacturing process, formula or mechanical tolerance confidential instead of patenting it (such as the Coca-Cola formula), competitors may lawfully buy the finished product and analyze it, provided they obtained the product legally and are not bound by a restriction that prohibits reverse engineering.
In the trade secret context, reverse engineering is generally legal when the product is acquired on the open market, and the analysis is conducted without improper means. The UTSA and trade secret law generally target misappropriation of the protected information, such as theft, breach of confidentiality, deception or unauthorized access. They do not prohibit lawful product analysis simply because that analysis reveals information the owner hoped to keep secret.
Key Takeaway: Is Reverse Engineering Legal? It Depends on the Context.
Reverse engineering is not automatically illegal, but it is not automatically risk-free. Under trade secret law, it may be a proper means of learning how a lawfully acquired product works. Under patent law, however, reverse engineering does not excuse copying or mimicking patented features or technology. Businesses evaluating a competitor’s product should consider both patent rights and trade secret obligations before relying on reverse engineering as a strategy.
About Howard Wernow, Patent Attorney
Howard Wernow is a partner and registered patent attorney at Sand, Sebolt & Wernow, focusing on patent preparation and prosecution, trademark counseling and copyright law and related litigation, as well as intellectual property licensing and technology transfers.
Howard counsels clients ranging in size from Fortune 500 companies to individual entrepreneurs.
He keeps an active international intellectual property practice, counseling companies from around the world on United States patent and trademark law and has clients from the United Kingdom, Europe, Canada, and Australia.
Howard has been named a Rising Star by Super Lawyers.