Day: 09/30/2020

In this episode of Stuff You Should Know About IP, Thomas Colson and Raymond Guarnieri welcome special guest Candice Renaldo to discuss the reverse-engineering of trade secrets. The show Gourmet Makes with Claire Saffitz regularly reverse-engineers well-known candies, such as Skittles, Reese’s peanut butter cups, and Jelly Belly jelly beans. In one episode of Gourmet Makes, Saffitz deconstructed a Skittle and attempted to recreate it using the published ingredient list. Saffitz would have been prohibited from doing this if Skittles were protected by a patent, because a patent prohibits the making, using, selling, or offering for sale of a patented product. However, if Skittles had patent protection, she would not have had to reverse-engineer them to learn how they were made, because a patent teaches anyone reasonably skilled in the art how to make the patented product. In contrast, if Skittles are protected by a trade secret, the company that owns the secret would not tell Saffitz how to make the Skittles, but she would be allowed to make them if she were able to reverse-engineer the candy. Trade secrets are fragile, and they can be lost to reverse-engineering. Stealing a trade secret is known as misappropriation, however, and that is prohibited. Even if Saffitz succeeded at reverse-engineering the Skittles, she could not sell them under the Skittles name because that name is trademarked. Also, even if she were to reverse-engineer the Skittles, she could not patent them because she did not invent them. However, she might be able to patent a new formula for a healthier version of the candy. An inventor needs to carefully consider whether to protect an invention with a patent or as a trade secret. A company can produce a product that is relatively inexpensive to make but was very expensive to develop.