Technological innovation doesn’t take place in a vacuum. Innovators routinely draw upon the insights of others as they develop new ideas. Studying an existing technology to figure out how it works is an obvious approach to developing new and better solutions to particular problems. Whether the technology is software, electronic, chemical, or mechanical, intellectual property law avoids dissuading innovators from taking apart the inventions of their competitors. But there are still limits on how the results of a reverse engineering effort can be exploited.
Done the right way, reverse engineering is not unlawful. If it was, innovation probably would be stifled to a significant degree. Anyone can buy a product off the shelf and freely study it. That’s why smart design often incorporates strategies to conceal sensitive technology. For example, an electronics maker might enclose its proprietary microchip in an unbreakable casing, which might discourage and frustrate most efforts to reverse engineer it. Software engineers use the process of obfuscation to achieve similar results. But the law does not prevent a determined researcher from finding ways around such design strategies.
Still, there are wrong ways to go about reverse engineering, which can provide potential remedies for innovators who feel their work has been unlawfully copied. A key principle of reverse engineering is that someone is not entitled to exploit the fruits of their research if the materials they are analyzing were obtained unlawfully. A prototype stolen from a lab, or software code snatched by hackers, is stolen property and subject to criminal as well as civil legal remedies.
Many kinds of reverse engineering can be prevented—or at least effectively countered—through the use of contracts. A well-drafted contract gives the technology owner significant advantages, like a clear legal remedy and an unambiguous obligation of counterparties. Such contracts can take many forms. Nondisclosure agreements provide innovators with a clear, enforceable tool against individuals or businesses that give competitors access to protected technology. License agreements can restrict how end users interact with a product, including explicit prohibitions against reverse engineering. Parties that have acknowledged that a technology is a trade secret can be sued for infringement.
Even when a competitor lawfully reverse engineers a technology, the owner business may still have good legal arguments for limiting or stopping the competitor from exploiting its discoveries. The legal theory that will work for a specific case will depend on the nature of the technology itself.
Inventions that are protected by patents offer a well-defined path for responding to efforts to commercially exploit the results of a reverse engineering effort. The chief reason for pursuing a patent is to prevent competitors from copying an invention, whether by reverse engineering or otherwise. At the same time, a patent involves making significant public disclosures about how the invention works. In essence, a published patent gives a competitor a detailed roadmap for a successful reverse engineering effort. But at that point, the patent’s market exclusivity gives the patent owner robust legal recourse against copycats.
Software inventions fall within a specialized area of patent law that in recent years has become more challenging. A software patent covers the functionality embedded in source code, rather than the code itself. So although a software patent may need to make enabling disclosures about an invention, it doesn’t need to reveal all the technical details that would make reverse engineering the invention a breeze. At the same time, however, the Supreme Court’s decision in Alice v. CLS Bank International, 134 S. Ct. 2347 (2014), established standards for software patentability that prevents many software inventions from being eligible for patent protection.
Sophisticated copying often involves significant efforts to conceal infringing uses of a patented technology. In some cases the patent owner may need to do its own reverse engineering of competitor products to identify potential infringement of its patents. Patent owners need to keep this in mind as they develop the practical components of their patent defense strategy.
Copyright law provides another avenue of recourse, especially for software developers. Even if software is patentable, a developer may not want to go through the expense of an uncertain patent process. Copyright provides an alternative avenue for limiting a competitor’s exploiting reverse engineered software, though it also comes with some downsides.
Copyright automatically applies to every original work of authorship, including software code. Among other things, a copyright owner has exclusive rights to the reproduction and distribution of the protected work. These rights extend to the entire work as well as its constituent parts. Copyright law protects software from both direct copying and close paraphrasing. Reverse engineering of software often involves reconstruction of code. A reconstruction may still infringe copyright by reproducing the key elements of the original software, even if it doesn’t reproduce the original code line-for-line. Copyright protects many of the details of software, including its graphics, interface design, file structure and organization, and so forth.
Although a copyrighted work doesn’t need to be registered with the U.S. Copyright Office for protection to apply, registration gives the owner access to important legal tools, including the right to seek recovery of attorneys’ fees from infringers in litigation and prima facie evidence that the copyrighted work is owned by the registrant.
There are two significant downsides to copyright that can make protecting code as a trade secret a better alternative for many developers. First, registering a work for copyright is that the source code must be disclosed as part of the registration process. Second, to prove infringement of registered code, the copyright holder must be able to prove that the infringer had access to the source code, and that the allegedly infringing code is substantially similar to that of the copyright holder.
I have spent most of my career in the San Francisco Bay
area and have served Silicon Valley as a patent practitioner
for 20 years, representing all types of clients...Read More