The Secret Is Out: Patent Law Preempts Mass Market License Terms Barring Reverse Engineering for Interoperability Purposes


As patent protection has emerged to protect software, courts and commentators have mistakenly focused on copyright law and overlooked the centrality of patent preemption to limit contract law where a mass market license which prohibits reverse engineering (RE) for purposes of developing interoperable products leads to patent-like protection. Review of copyright fair use cases on RE and Congress’s policy favoring RE for interoperability purposes in the Digital Millennium Copyright Act reinforce the case for patent preemption. Also, the fundamental freedom to RE embodied in state trade secret law, coupled with federal patent and copyright law and policies, cumulatively should override a contract barrier on RE based upon the public policy exception to contract enforcement. If courts fail to consider patent and public policy limits on contract, the anomalous result is potential outsourcing of interoperability development to one of the increasing number of foreign jurisdictions where interoperability policy overrides contract law. Ironically, that would harm the U.S. economy and thereby frustrate the purpose of the Intellectual Property Clause of the Constitution. Finally, the patent preemption/public policy invalidation approach to mass market contracts outlined in this article may also provide a new lens whenever a mass market contract results in a de-facto monopoly on useful data.


Comparative and Foreign Law | Computer Law | Conflict of Laws | Constitutional Law | Contracts | Intellectual Property Law | International Law | Internet Law | Law and Economics

Date of this Version

February 2006