Reverse engineering considerations when protecting inventions
Disclaimer: The information provided in this factsheet is meant as an educational resource only and should not be construed as legal advice.
- Reverse engineering, also called “tear down”, is a method or process to discover how a product functions (software) and/or its architecture (hardware).
- Reverse engineering is generally considered to be legal in US and Canada if the product has been legitimately obtained.
- Reverse engineering is considered an allowable method to discover a trade secret. However, if product functionality is patented, the patent owner has exclusive rights to use, own or manufacture the product (in the countries where the patent is issued). Reverse engineering does not permit someone to build a product that is covered by the patent claims.
- Reverse engineering is legitimate to:
- learn how something works;
- modify or repair a product;
- create a competitive product;
- enable interoperability with a product.
- Reverse engineering of software is permissible under copyright law, but may fall under other law as a breach of contract if it is prohibited in the end user license agreements (EULA) or NDA. If such terms are present, they override the copyright law that expressly permits it.
- Reverse engineering can be used to prove evidence of use when a company is trying to assert patent infringement, however, it is best to prove evidence of use with publicly available information and use reverse engineering during discovery to ensure the proof will be accepted in court.
- Reverse engineering for interoperability purposes is often regarded as fair use from a copyright perspective.
Example 1: Company A has an IoT device and wants the ability to communicate with a gateway of Company B that is using a proprietary communication protocol to communicate with its own IoT device. In this case, Company A could reverse engineer the communication protocol and implement it to communicate with the gateway as part of its IoT network.
Key considerations for Canadian companies regarding reverse engineering:
- If a company is selling a product in the US, that can be legally acquired, they may wish to consider protecting the innovation with utility patents before disclosing it to the public as a safeguard against future reverse engineering.
- Software running on secure servers (e.g., cloud-based AI algorithms) cannot be legally accessed by reverse engineers and can be a good candidate for trade secret protection if there are strong measures to prevent a leak (e.g., cybersecurity, development platforms and human mistakes).
- When using reverse engineering reports to understand a competitor’s product, it is important to do patent searches to make sure that any functionality the company is interested in incorporating does not fall under the competitor’s patent protection. The patent search should be redone after 18 months to make sure there are no new publications.
- It is recommended to include clauses preventing reverse engineering in all NDAs and End User License Agreements (EULA) provided with a product (hardware or software).
- According to Natalie Giroux, President at Stratford Intellectual Property, “It is recommended to discuss with an IP lawyer before undertaking reverse engineering of a competitor’s product, because although it is generally legal, there are many US acts that can be involved in one specific case”.
Additional information:
- For information about IP protection in the US, please see the Canadian Intellectual Property Office’s publication on Doing business abroad: Protecting your IP in the United States
- For more material relating to the export of goods to the US, please see the Doing Business in the United States page
- For more information on going global with your IP, visit Canada.ca/export-ip
