238 • Impacts of Applied Genetics — Micro-Organisms, Plants, and Animais 
as opposed to being specifically created by 
statute; the State courts recognize and protect it 
as a form of property. The underlying policy is 
one of preventing unfair competition or unjust 
benefits. The protection lasts indefinitely. Two 
well-known examples of long-time trade secrets 
are the formulas for Coca Cola and for Smith 
Brothers’ black cough drops; the latter is sup- 
posedly over 100 years old. 
A company relying on trade secrecy to pro- 
tect an important invention must take several 
steps to effect that protection. These include; 
permitting only key personnel to have access, 
requiring such people to sign complex contracts 
involving limitations on subsequent employ- 
ment, and monitoring employees and com- 
petitors for possible breaches of security. Even 
so, there are practical limitations to what can be 
done and what can be proved to the satisfaction 
of a court. Moreover, independent discovery of 
the secret by a competitor is not improper, in- 
cluding the discovery of a secret process by an 
examination of the commercially marketed 
product. Most importantly, once a trade secret 
becomes public through whatever means, it can 
never be recaptured. Thus, reliance on trade 
secrecy for protecting inventions can be risky. 
Patents 
In contrast to the common law development 
of trade secrecy, patent law is a creation of Con- 
gress. The Federal patent statutes (title 35 of the 
United States Code) are derived from article I, 
section 8, of the Constitution, which states: 
The Congress shall have Power ... To pro- 
mote the Progress of Science and useful Arts, hy 
securing for limited Times to Authors and In- 
ventors the exclusive Right to their respective 
Writings and Discoveries. 
This clause grants Congress the power to cre- 
ate a Federal statutory body of law designed to 
encourage invention by granting inventors a 
lawful monopoly for a limited period of time. 
Under the current statutory arrangement, 
which is conceptually similar to the first patent 
statutes promulgated in 1790, a patent gives the 
inventor the right to exclude all others from 
making, using, or selling his invention within 
the United States without his consent for 17 
years. In return, the inventor must make full 
public disclosure of his invention. The policy be- 
hind the law is twofold. First, by rewarding suc- 
cessful efforts, a patent provides the in\ entor 
and those who support him with the incentixe 
to risk time and money in research and develop- 
ment. Second, and more importantly, the patent 
system encourages public disclosure of techni- 
cal information, which may otherwise ha\ e re- 
mained secret, so others may use the knowl- 
edge. The inducement in both cases is the po- 
tential for economic gain through exploitation 
of the limited monopoly. Of coui'se, there are 
many reasons why this potential may not he 
realized, including the existence of competing 
products. 
To qualify for patent protection, an imention 
must meet three statutory reciuirements: it 
must be capable of being classified as a process, 
machine, manufacture, or composition of mat- 
ter; it must he new, useful, and not ohx ious; and 
it must be disclosed to the |)uhlic in sufficient 
detail to enable a person skilled in the same oi' 
the most closely related area of tcu’hnolog^v to 
construct and operate it. I’lants that reproduc<' 
asexually may also he patented, hut slightly dif- 
ferent criteria are used. 
Although the categories in th(^ first r'e(|uire- 
ment are quite broad, th(w are not unlimited. In 
fact, the courts ha\e held such things as scien- 
tific principles, mathematical formulas, and 
products of nature to he unpatentahh' on th(* 
grounds that they are only discox ci ies ol pi«>- 
existing things— not the r(?sult of the inx(’nlix«*, 
creatix'e action of man, xvhich is xx hat the pat»'iit 
laws are designed to (Micourage. I his concept 
was reaffirmed in the T’/ja/craharfx’ opinion. 
The recjuirement that an inxcntion he uselul. 
new, and not ohxious further narmxxs the 
range of patentable inx (Mitions. I ’tilitx I'vists it 
the invention xvorks and xxould hax «• .some bene- 
fit to society; the d(!gr(M’ is not import. mt ,\ox ci- 
ty signifies that tlu; inxcntion must dilhT I mm 
the "prior art” (publicly knoxxn inxentions or 
knowledge). Novelty is tiot considered to 
— e.g., if: 1) the a[)plicant for a patent is not 
the inventor, 2) the? inxcntion xxas prexiousix 
