What is Reverse Engineering?
During WWII and the Cold War, reverse engineering was often used. It's often used by the military to clone other country's technology, gadgets, or information, or parts of them, that have been captured by regular troops in the field or through intelligence operations. Discrete geometry has grown in prominence in vehicle design, engineering, and quality assurance in recent years, thanks to improved computing capacity, more processing memory, and high-speed contact or non-contact scanning devices.
So Reverse engineering is the practice of creating a geometric computer-aided design (CAD) model from measurements taken from an actual physical model using a contact or non-contact scanning technique. Reverse engineering was born out of a need to replace missing or burned-out parts for which no technological documentation was available. This might happen if the part was shipped without drawings or if the drawings were misplaced or destroyed. Not only for immediate repair but also to produce extra spares to support the component over a longer period of time, reengineering or reverse working certain parts may be a less costly solution than re-importing.
Is reverse engineering permissible under U.S. trade secret law?
Reverse engineering is generally permitted in the United States under federal trade secret legislation, the Defend Trade Secrets Act (DTSA). Misappropriating trade secrets is prohibited under the DTSA, which includes obtaining trade secrets by "improper means," such as "theft, bribe, misrepresentation, violation or inducement of an obligation to preserve confidentiality or spying by electronic or other means". The DTSA expressly states that reverse engineering is not an "improper means" in and of itself. Reverse engineering mixed with "improper means" would, however, violate the DTSA.
Position in India:
In India, there is no law or regulation governing the safety of trade secrets. Trade secret protection, on the other hand, is upheld by contract law equality principles or a common lawsuit for infringement of trust. As in Tata Motors Limited &Anr v State of Bengal,1 the High Court of Kolkata relied on the definition of the term trade secrets which has been defined in Black's Law Dictionary as:
"A formula, process, device, or other business information that is kept confidential to maintain an advantage over competitors; information including a formula, pattern, compilation, program, device, method, technique, or process-that (1) derives independent economic value, actual or potential, from not being generally known or readily ascertainable by others who can obtain economic value from its disclosure or use, and (2) is the subject of reasonable efforts, under the circumstances, to maintain its secrecy".2
Furthermore, no law defines trade secret misappropriation; however, the illegal discovery of a trade secret as a result of a violation of contract or fraudulent actions may amount be considered as misappropriation of trade secrets. But to prove trade-secret misappropriation, one has to satisfy the three elements for a claim of protection of confidence, which was noted by Bombay High Court:
Firstly, it must be shown that the information itself is of a confidential nature. Secondly, it must be shown that it is communicated or imparted to the defendant under circumstances which cast an obligation of confidence on him. In other words, there is a relationship of confidence between the parties. Thirdly, it must be shown that the information shared is actually used or threatened to be used unauthorized by the Defendants, that is to say, without the licence of the Plaintiff.3
Now, a "business secret" that is confidential in nature can refer to technical and operational knowledge that is not well available, and is capable of providing economic benefits to the owner of rights, is practicable, and that the owner of those rights has taken steps to keep secret. "Not known to the general public" is the essential constituent component. "Not known to the public," according to the interpretations, suggests that workers in the relevant sector aren't necessarily aware of or can't readily obtain relevant knowledge.However, the following conditions cannot be labelled as "not known to the public", implying that this fact is publicly available and does not represent trade secrets:
(i)For people in the relevant scientific or economic sector, the knowledge is common sense or business standard; (ii)The information is limited to a simple mix of scale, shape, products, and components that the general public can see after joining the market; (iii)The information has been made available by publications or other forms of media; (iv)Knowledge has been made public by public seminars, exhibits, and other means; (v)Other freely accessible sources can be used to access the information.According to the aforementioned conditions, obtaining trade secrets through formal channels through reverse engineering does not constitute misappropriation of trade secrets.
Reverse engineering is generally permitted and does not violate trade secret laws of its own. However, it is important to be mindful of contractual requirements and privileges arising from procurement, end-user licence, and other agreements that may affect the extent of allowable reverse engineering.Furthermore, various jurisdictions could interpret reverse engineering provisions differently, which may impact lawsuits for trade secret misappropriation.
1. WP No. 1773 of 2008.
3. Beyond Dreams Entertainment Pvt Ltd & Ors vs Zee Entertainment Enterprises Ltd & Anr, Notice Of Motion (L) No. 785 Of 2015 In Suit (L) No. 251 Of 2015.
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