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Reverse engineering – some cautions

Why do companies reverse engineer?Reverse engineering techniques are used to develop competing interoperable products as well as to analyze how a competitor's product works, what it does, who manufactures it, what components it consists of, estimate costs, identify potential patent infringement, et cetera. Most importantly, companies use reverse engineering techniques to assist in the development of a competing product that does not infringe a competitor's patent.


What legal restrictions should be kept in mind when reverse engineering?
The acts involved in or resulting from reverse engineering a product can violate various laws including patent laws, copyright laws, and contract laws. Accordingly, reverse engineering should always be conducted with caution.

The process of reverse engineering may violate a patent. Also, it is possible that a product arrived at through reverse engineering techniques may still infringe patent rights. In Europe, proposed European Software Directive legislation provides that acts undertaken for the purposes of interoperability should not amount to patent infringement (e.g. creation of a device that can play a patented media format, allowing a computer program to read and write a competitor’s patented file formats, et cetera.) However, such exemptions do not currently exist in the U.S. and are not being proposed. In this vein, Forgent Networks has recently sued 31 major hardware and software vendors in the U.S., including IBM, Apple Computer and Adobe Systems, for infringement of its controversial patent (U.S. Patent No. 4,698,672) covering the compression algorithm behind the popular JPEG format.

In the U.S., the Digital Millennium Copyright Act generally prohibits circumvention of technological protection measures that on its face appears to prevent reverse engineering of those measures that control access to a copyrighted work. However, the act does contain a limited exception to the ban on circumvention, which permits reverse engineering of the technology aimed at interoperability of file formats and protocols.

Increasingly, contract clauses forbidding reverse engineering are being included in technology and software licenses. Sometimes sellers include these clauses in "shrink-wrap," "click-wrap," or "browse-wrap" licenses without enabling the user to negotiate the terms of such a license. A proposed amendment to contract law called the Uniform Computer Information Transactions Act, already adopted by some U.S. state legislatures, would make these kinds of contracts enforceable, and therefore more difficult to challenge their anti-reverse engineering provisions.

Isis Caulder is a Toronto-based lawyer and patent agent with a Masters in Electrical Engineering. Isis is a partner at the IP specialty firm Bereskin & Parr. She can be reached by phone at (416) 364-7311 or by e-mail at icaulder@bereskinparr.com. This article is intended to provide general information regarding intellectual property and should not be considered legal advice.