Kewanee Oil Co. v. Bicron Corp

In Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 94 S.Ct. 1879, 40 L.Ed.2d 315 (1974), the Supreme Court held that Ohio's law of trade secrets, which, inter alia, granted monopoly protection to processes and manufacturing techniques that had been in commercial use for over one year but were otherwise patentable, was not preempted by the federal Patent Act. See id. at 474, 94 S.Ct. at 1882-83. The Court's analysis of the permissible reach of state regulation focused on whether the Ohio statute " 'clashes with the objectives of the federal patent laws.' " Id. at 480, 94 S.Ct. at 1885 (quoting Sears, Roebuck, 376 U.S. at 231, 84 S.Ct. at 788-89). These objectives the Kewanee Court found to be threefold: providing an incentive to invent, promoting the full disclosure of inventions, and ensuring that "that which is in the public domain cannot be removed therefrom by action of the States." Id. at 480-81, 94 S.Ct. at 1885-86. The Court concluded that the Ohio trade secrets statute did not offend the first and third of these objectives and, while it did not promote full disclosure of inventions, the Court reasoned that its effect would be minimal given that few inventors with patentable subject matter would opt for the relatively weak protections of the trade secrets statute. See id. at 483-91, 94 S.Ct. at 1887-91. Thus, the Ohio trade secrets statute was held not to be preempted by federal patent law. See id. at 493, 94 S.Ct. at 1891-92. The Supreme Court applied the same three-factor test in Aronson v. Quick Point Pencil Co., 440 U.S. 257, 99 S.Ct. 1096, 59 L.Ed.2d 296 (1979).