if at all, against the disclosing party.68 The public, on the other hand, can be prevented from ever knowing the secret. The valuable policy behind patents and copyrights of offering the creator a limited monopoly in exchange for his idea is not fulfilled. The competing interests of the creator and the public are not well balanced—either the creator keeps the secret intact and the public uninformed, or the secret is lost to the public domain forever and the creator is without remedy.69

70

The doctrine of trade secret was placed in considerable doubt by the Sears-Compco decisions of the Supreme Court. Although the Sears-Compco cases did not involve trade secrets, they did involve the state common law of unfair competition, of which the law of trade secrets is a branch. The question of survival of the trade secret doctrine finally was resolved in Kewanee Oil Co. v. Bicron Corp.73 Kewanee involved a secret process to grow large synthetic crystals developed by the Harshaw Chemical Company. Several employees, each of whom had at a previous time executed an agreement not to disclose Harshaw's trade secrets, left Harshaw's employ and joined Bicron. Bicron soon produced large crystals too. The Supreme Court reversed

velopment or manufacture. Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 476 (1974).

The liability of the disclosing party is predicted on unlawful or unethical appropriation, breach of contractual agreement, or breach of confidence. See note 55 supra. See also Bender, Trade Secret Protection of Software, 38 GEO. WASH. L. REV. 903, 909 (1970). To sustain his cause of action, the infringed party must show that the secret existed and had value to his business, that he was entitled to use it, and that the infringer acquired the secret by unlawful or unethical means. 55 AM. JUR. 2d Monopolies, Restraints of Trade, and Unfair Trade Practices & 704 (1972).

69 See Note, Protection of Computer Software-A Hard Problem, 26 Drake L. REV. 180, 184 (1976).

70Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, reh. denied, 376 U.S. 973 (1964); Compco Corp. v. Day-Bright Lighting, Inc., 376 U.S. 234, reh denied, 377 U.S. 913 (1964). See notes 35-45 supra and accompanying text.

See, e.g., W. Prosser, Law OF TORTS, 956-57 (4th ed. 1971).

72The case of Lear, Inc. v. Adkins, 395 U.S. 653 (1969), merely put off the issue. Lear involved an engineer, Adkins, whose employment contract specified he was to have title and control over his invention, but that he would license Lear in return for a royalty. Adkins developed a gyroscope improvement and applied for a patent. Pending patent approval, Adkins entered a licensing arrangement with Lear. Adkins then left Lear, and Lear ceased paying royalties. The patent issued, and Adkins sued Lear on breach of the license. The Court analyzed the protection of the improvement before the patent issuance as one of trade secret, and Adkins' rights to recovery or royalties prior to the issuance turned on the validity of the state trade secret law. The Court posed the question of such validity, but then declined to answer it: "[W]e should not now attempt to define in even a limited way the extent, if any, to which the States may properly act to enforce the contractual rights of inventors of unpatented secret ideas. 395 U.S. at 675.

73416 U.S. 470 (1974).

74

The Sixth Circuit had found and the federal patent laws.

the Sixth Circuit's denial of injunction. conflict between Ohio's trade secret law The Court examined first whether states were forbidden to protect intellectual property in the form of trade secrets. Using the GoldsteinTM rationale" the Court found no proscription of state protection of trade secrets as long as "in regulating the area of patents and copyrights [the states] do not conflict with the operation of the laws in this area passed by Congress." The Court articulated the policies behind both patent and trade secret laws determined that there was no conflict,81 and concluded that "patent law does not preempt trade secret law."82

78

Even though it now appears that state trade secrecy laws are valid, it is questionable that they are of any value to IC manufacturers. First, there is no secret to be misappropriated. All ICs are sold either in the form of packaged devices or as dice (naked chips). A prospective mask pirate would find it relatively easy to free the chip from its package and photograph it as described above. Obviously, the IC package represents no problem if the circuit is sold in die form. Since it is not illegal to dissolve the epoxy package or break the hermetically sealed package lid, the mask patterns may be viewed and photographed freely. The secret is, or could be as safe as its vault, the package. Present

74478 F.2d 1074 (1973).

75Ohio had adopted the definition of trade secret in the RESTATEMENT OF TORTS § 757, Comment (b)(1939). 416 U.S. at 474 See note 60 supra and accompanying text.

76Goldstein v. California, 412 U.S. 546 (1973).

See notes 46-52 supra and accompanying text.

78 See Goldstein v. California, 412 U.S. 546, 556-58 (1973).

79416 U.S. at 479.

80416 U.S. at 480-82.

81"Trade secret law and patent law have co-existed in this country for over one hundred years. Each has its particular role to play, and the operation of one does not take away from the need for the other." 416 U.S. at 493.

821d. Kewanee is still good law today, as the recent decision of Aronson v. Quick Point Pencil Co., 47 U.S.L.W. 4219 (February 28, 1979), makes clear. Petitioner in Quick Point had contracted with respondent company to receive royalties in return for the exclusive right to make and sell petitioner's original, but simple keyholder. They agreed that respondent would pay petitioner a royalty of 5% of sales if petitioner secured a patent on the keyholder within 5 years, but 22% of sales if petitioner's patent was denied. The agreement was to last as long as respondent sold petitioner's keyholder. Petitioner's patent application was denied. Respondent had preempted the market initially, but other competitors soon appeared, and respondent attempted to have the agreement with petitioner declared unenforceable under the rationale of Lear, Inc. v. Adkins, 395 U.S. 653 (1969), Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225 (1964), and Compco Corp. v. Day-Bright Lighting, Inc., 376 U.S. 234 (1964). The Court, however, used Kewanee to find the agreement to pay 22% royalty indefinitely even less offensive to federal patent law than the state trade secret law: "our holding in Kewanee Oil Co., ... puts to rest the contention that federal law pre-empts and renders unenforceable the contract made by these parties." 47 U.S.L.W. at 4221.

technology simply does not afford the needed impregnability at a marketable price. It should be noted that since ICs are basically not repairable if defective, there is no reason not to package them as securely as possible. Second, as the Supreme Court made clear in Kewanee, "reverse engineering" is a perfectly legal method of discovering a trade secret.85 Reproducing the mask sets of another IC manufacturer by photographing is just such reverse engineering and is not proscribed.

The nonstatutory modes of protection of unfair competition and trade secret are totally inadequate as applied to ICs. Statutory modes of protection of patent and copyright offer more hope and are examined next.

B. Statutory Protection

The constitutional basis upon which the law of patents and copyright rests is in Article I, section 8: "The Congress shall have Power. ...To promote the Progress of Science and useful Arts, by securing for limited times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries."

The scope of "writings" and "discoveries" as a constitutional limit has generally been held broad, and so it is reasonable to assume that no constitutional objection exists to statutory protection of IC masks or reticles.

1. Patent Protection

37

88

Patents are a statutory means of protection which might be applied to ICs. Patents afford the greatest degree of protection but are relatively harder to procure than other kinds of protection.

The statutory hurdles which an IC mask or reticle would have to

83CONTU Meeting 19, supra note 27, at 48.

84 See note 25 supra.

85See note 67 supra.

See, e.g., Kalem Co. v. Harper Bros., 222 U.S. 55 (1911); White-Smith Music Co. v. Apollo Co., 209 U.S. 1 (1908); Bleistein v. Donaldson Lithographing Co., 188 U.S. 239 (1902); United States v. Duell, 172 U.S. 576 (1899); BurrowGiles Lithographic Co. v. Sarony, 111 U.S. 53 (1884); Trade-Mark Cases, 100 U.S. 82 (1879); McClurg v. Kingsland, 42 U.S. (1 How.) 202 (1843); Wheaton v. Peters, 33 U.S. (8 Pet.) 590 (1834); Grant v. Raymond, 31 U.S. (6 Pet.) 218 (1832). See generally 1 WALKER ON PATENTS §§ 10-11 (A. Deller 2d ed. 1972). 8735 U.S.C. §§ 1-293 (1976).

It should be noted at the outset that circuit designs and the IC planar process are each separately patentable. Here only the patentability of a mask or set of masks is at issue.

91

89

surmount are fourfold. The mask must be statutory subject matter," it must be novel, it must be nonobvious to one skilled in the art,92 and it must be sufficiently disclosed to permit one skilled in the art to make use of the invention.93 Patent protection lasts seventeen years” and provides its owner a monopoly on the "use, manufacturer, or sale"95 of the invention durnig that period."

89 There is a fifth judicially created requirement, first stated in Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Co., 340 U.S. 147 (1950). In that case all the elements of the putative invention were known in the prior art, as was the particular combination of such elements. The Court announced that "only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable. . . . This case is wanting in any unusual or surprising consequences from the unification of the elements here concerned." Id. at 1527. In 1952, the patent law was revised, but the synergy requirement has apparently survived. In Anderson's-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969) the Court again applied the A&P synergy doctrine to a combination of previously known elements and rejected the patent. "A combination of elements may result in an effect greater than the sum of the several effects taken separately. No such synergistic result is argued here." Id. at 61. Note that this weak, subjective requirement only applies if the patent is for a rearrangement or new combination of old elements. This would undoubtedly be applied in any action to patent an IC mask.

There are signs that the synergy requirement may die a deserved death. In Republic Indus., Inc. v. Schlage Lock Co., [1978] 417 P.T.C.J. (BNA) D1 (7th Cir. February 1, 1979), the court rejected the synergy requirements and instead used the basic requirements set out in Graham v. John Deere, 383 U.S. 1 (1966). See notes 126-33 infra and accompanying text.

Some writers view the post-Graham resurrection of the A&P synergy doctrine in Anderson's-Black Rock as no more stringent than the § 103 nonobviousness test and completely consistent with it. See, e.g., Rich, Laying the Ghost of the "Invention" Requirement, 1 AM. PAT. L. Ass'N Q.J. 26, at 42-45 (1972). Yet the standards of "nonobviousness to one skilled in the art" and of "more than the sum of its parts" are obviously different and independent.

9035 U.S.C. § 101 (1976).

9135 U.S.C. § 102 (1976).

9235 U.S.C. § 103 (1976).
9335 U.S.C. § 112 (1976).

9435 U.S.C. § 154 (1976).

95 See Zenith Radio Corp. v. Hazeltine Research, Inc., 395 U.S. 100 (1969). 96Design patents are another form of protection authorized in 35 U.S.C. § 171 as follows:

Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.

The provisions of this title relating to patents for invention shall apply to patents for design, except as otherwise provided.

IC masks are not eligible because they are not ornamental as required. See Franklin Knitting Mills v. Gropper Knitting Mills, 15 F.2d 375 (2d Cir. 1926). As Justice Strong said in Gorham Mfg. Co. v. White, 81 U.S. 511 (1872), design patents "contemplate not so much utility as appearance, and that, not an abstract impression or picture, but an aspect given to those objects mentioned in the Acts. ... It is the appearance itself... that constitutes mainly ... the contribution to the public which the law deems worthy of recompense". Id. at 254.

STATUTORY CATEGORIES

The first hurdle is that of falling within the statutory classes. These include "any new or useful" process, machine, manufacture, or composition of matter, or any new and useful improvement thereof."98 Of these categories, it is clear that IC masks do not qualify as a new composition of matter, as would say, a new aluminum alloy.

99

Is an IC mask a new process? In section 100(b) a statutory process is defined as a "process, art or method, and includes a new use of a

Of course, there may be mask aficionados to whom IC masks are ornaments, but this would not give rise to their classification as ornaments. Design patents really are a hybrid category between copyright and patents described in 35 U.S.C. § 10, and in some cases one can choose between a design patent and a copyright. It is apparent that... a certain object may be an article of manufacture as well as a work of art and the design therefore might well come under the Design Patent Law as a design for an article of manufacture or under the Copyright Act as a design for a work of art. ... The Design Patent Law and the Copyright Law afford different types of protection.... In a case which comes under either statute, it becomes a matter of choice by the author or owner whether he will seek protection under the patent or copyright law. Jones Bros. Co. v. Underkoffler, 16 F. Supp. 729, 730-31 (M.D. Pa. 1936). Most courts hold that the choice of one form of protection excludes the other:

Nevertheless, when the painting left the artist's hand, it was of such a character as made it eligible either for copyright or for patenting, at the option of the author or owner. . . . Since it was qualified for admission into the two statutory classes, I see no reason why it might not be placed in either. But it could not enter both.

Louis DeJonge & Co. v. Breuker & Kessler Co., 182 F.150, 151 (E. D. Pa. 1910), aff'd on other grounds, 191 F. 35 (3d Cir. 1911), and 235 U.S. 33 (1914). The Second Circuit, however, has held that copyrights and design patents are not mutually exclusive. See Vacheron & Constantin-Le Coultre Watches, Inc. v. Benrus Watch Co., 260 F.2d 637 (2d Cir. 1958) (unenforceable copyright no bar to securing a design patent), and Korzybski v. Underwood & Underwood, Inc., 36 F.2d 727 (2d Cir. 1929) (concurrent patent and copyright permissible, but copyright invalid when it discloses no more than already contained in patent). The Supreme Court has expressly declined to pass on the issue. Mazer v. Stein, 347 U.S. 201, 217 (1954). It is generally held, however, that mechanical patent and copyright are mutually exclusive. Brown Instrument Co. v. Warner, 161 F.2d 910 (D.C. Cir. 1947); Taylor Instrument Co. v. Fawley-Brost Co., 139 F.2d 98 (7th Cir. 1943).

97"New" and "useful" are terms of art, but mean basically what they say. A book is not "useful" and cannot be patented (though because it is not useful, it will fit into copyright). See notes 114-33 infra and accompanying text. "New" is also governed by section 102, and the section 101 use of "new" does not enlarge on this.

9835 U.S.C. § 101 (1976).

"""Composition of matter" embraces chemical compounds, mechanical or physical mixtures, alloys... [and] . . . covers all compositions of two or more substances. It covers all composite products whether they are the result of chemical union, or of mechanical mixture, or whether they be gases, fluids, powders or solids.... Every patent for a composition of matter or product must identify it so that it can be recognized independently of the description of the process for