Does Back Engineering Amount to Breach of Intellectual Property Rights or Trade Secrets?

Back engineering is, in general, allowed by the law as an acceptable way by which businesses and individuals may seek knowledge to apply in various ways. This article looks at what the law has to say about this activity, and about the limits that it places on it.

When a business or individual tries back engineering, they take an existing product, study it, and attempt to work out what components make it up, how they work together, and how the product is made.

While it might seem as if attempts at back engineering could infringe on the intellectual property rights of the original creator, the Defend Trade Secrets Act, or the DTSA, does allow it as a legitimate method by which businesses are to gain information on existing products and business practices. The DTSA, however, does not allow theft of intellectual property. For instance, while back engineering a product is directly allowed, you could still be found guilty of intellectual property theft if you gain access to the product in question through dishonest means.

What do state laws say about back engineering?

A ruling by the Supreme Court, in 1971, has asserted that no state laws may declare methods like back engineering illegal. It also states that anyone is free to apply back engineering to uncover trade secrets. California law, specifically, states that back engineering, by itself, is not considered unacceptable.

Back engineering attempts may be forbidden by contract

In general, businesses that are concerned about attempts by others to back engineer their products may insert clauses in their contracts that prohibit back engineering, or limit the goals for which it may be done. These restrictions are often enforceable under the law.

If a person back engineering a product exceeds the limits imposed by the governing contract, they may be found guilty of breach of contract, or even of intellectual property theft. A court in Texas, for example, found that when a contract required the parties involved to maintain secrecy over the technology present in a product purchased, the clause was adequate to maintain in court that back engineering amounted to misappropriation of intellectual property. The court found that back engineering was only to be considered proper and legally valid if not forbidden by contract.

In California, however, a court viewed a similar matter in a different way. Judges expressed the opinion that California’s trade secret law, and its definition of unacceptable means of uncovering and using proprietary information, couldn’t be expanded by businesses and individuals in a contract. Even if an end-user license agreement were to prohibit attempts at back engineering an artifact, judges found, violation by a customer could only be viewed as a breach of contract. It could not be construed as the basis of an intellectual property rights claim.

To summarize

In general, it is safe to assume that back engineering is legal, and does not constitute violation of trade secret or intellectual property laws. It’s important to keep in mind when making back engineering attempts, however, that the degree to which rights to perform such actions exist, may be limited by end-user license agreements and contracts that are a part of a relevant transaction. For further insight into specific cases, contacting an attorney specializing in intellectual property rights could be the right move to make.