Reverse engineering: Let's work backwards

By Nicole Neethling on 12 February 2021

"To understand how something works, you must first take it apart and unravel its secrets, only then can you build something better.  This is called Reverse Engineering.  In the future, corporations will rely on it to gain access to their competitors' secrets."  Or so went the intro to Ben Affleck's movie Paycheck, where Affleck was an engineer hired by companies to reverse engineer their competitors' products.  Their intentions might not have been the purest of sorts, so the question that was left was whether this process is legal, and further can (or should) it be prevented?

What is Reverse Engineering?

A line that Affleck's character repeated throughout the movie was, "let's work backwards here", which at its core is what reverse engineering ("RE") is about.  It is taking a working product and deconstructing it into all its parts, to determine how the whole and all the sub-parts work.  A recent example can be seen with Porsche and Audi, who in a joint venture to create the next generation EV platform realised that Tesla's was better in quality and price than they had thought.  It took each of the auto giants to purchase a Tesla and reverse engineer it to figure out how Tesla was able to develop such superior technology.

The benefits of RE have been and still are crucial for the advancement of technology and software.  RE provides the ability to learn and study how a product or software works.  It provides for a product's enhancement, whether by debugging, modification or simplification.  RE skills are also used to detect and neutralize viruses and malware and makes it possible to develop compatible or interoperable products to an initial product.  It can even be used to replace so-called legacy parts where a manufacturer has closed its business, or simply to produce spare parts locally, or at a better price.  All these factors show great promise and benefit for the public at large.  However, RE can also be used to the detriment of an owner's interest, when competitors use RE to create a product that will compete with the owner's.  So how does one resolve the conflict of these interests?

The Intellectual Property ("IP") branch of law acts as a delicate scale to balance the interest of the owners of IP against those of the public.  On the one side, it serves to give a monopoly to the owners of IP, who have invested time, skill and money to invent or create a product or process.  On the other side, IP law aims to serve the expansion of the field, considering the public who could greatly benefit from the product if they had access to it.  RE requires that the tension between these two sides be constantly recalibrated to determine when RE should be allowed, and when not. 

Is it legal?

RE in itself is not illegal.  But is there a general right to reverse engineer a product?  It has been argued that in some instances a right to RE may exist.  Further, different countries have different levels of IP protection and public allowances.  This makes the interaction between RE and IP law an interesting one.  Answering the legality of RE requires the weighing up of the various IP interests with those of the (relevant nation's) public.

1.  Reverse engineering and patent law

The nature of patents is to prevent others from using, making, or selling the patented invention.  It goes without saying that RE a protected invention for commercial purposes, amounts to all of the mentioned prohibited acts and will accordingly infringe the patent.  This gives the patent owner the greater weight on the scale. 

However, patents are only granted for the scope of the invention that is disclosed in the patent specification, which must be sufficient to allow a person skilled in that field to be able to make and use the invention.  This requirement causes an interesting shift in the balance, as it has the effect of allowing others to study the patented invention and underlying features, and designing around the prohibited product, towards a new product, without infringing the patent.  Therefore, as long as one reverse engineers a patented product only to produce a new product that would not fall into the disclosed spec, then no infringement will occur and the process will not be prohibited. 

2.  Reverse engineering and trade secrets

Trade secrets are not registered with a national office and to be protected require that the owner actively ensure that their secrets are under lock and key.  The US case of Chicago Lock Co. v. Fanberg, 676 F.2d 400 (1982) explained how RE should be weighed up against trade secrets by saying “it is well recognized that a trade secret does not offer protection against discovery by fair and honest means (my emphasis) such as by independent invention, accidental disclosure, or by so-called reverse engineering, that is, starting with the known product and working backwards to divine the process.  Thus, it is the employment of improper means to procure the trade secret, (my emphasis) rather than mere copying or use, which is the basis of liability.” 

Though this is a US judgement, it reflects the international norms as set out in the Article 10bis of the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights to protect trade secrets only to the extent that they are unlawfully gained by another.  The rationale behind this presumably being that the time and effort required for RE to be performed, provides would-be reverse engineers with an adequate obstacle, thus protecting the owners.  Accordingly, for those who use their own skill and judgement and can surmount these obstacles will not, unless otherwise stated, be prohibited from doing so.  In tipping the scales further, James Pooley, the former Deputy Director of the World Intellectual Property Organization has said, "… if you properly reverse engineer a product, the information you discover can be held by you as your own trade secret".  This leaves us with the idea, that not only can RE be legal, but can also be lucrative.

For this reason, those who wish to RE a product should be careful in how they obtain it.  If you have watched the movie Paycheck, you would have noticed that Affleck's character bought the product he wished to RE.  The same with Audi and Porsche who bought the Tesla Model 3s.  Follow suit!  Avoid license agreements and simply buy the product outright.  Even then, ensure that there are no restrictions, user conditions, or other documents which might prevent you from RE.

3.  Reverse engineering and copyright law

Copyright will protect its owner from others' unauthorised copying of their 2D blueprints, as well as any 3D representations from those blueprints.  In other words, if a 3D product was made public and was subsequently copied using RE, and not from the blueprints, then there is no copyright infringement.  Accordingly, an owner will have to prove that his blueprints are at the heart of the 3D reproduction in question.  The engineer's access to the source codes, blueprints and confidential information, would be taken into account in looking at the legality of the RE.  For such owners, it is possible to place hidden features or fingerprints on their manufactured products, that are slightly different from the blueprints.  This would then make it easy to see where a person has unlawfully used the blueprints and when a person has genuinely RE'd the manufactured product. 

In keeping the scales balanced, the scope of copyright protection does not extend to spare parts.  According to our SA copyright law, when an owner sells its own spare parts, which have a utilitarian purpose to the public, the copying of these 3D spare parts by RE will not amount to infringement.  Once again, this would only be allowed, if there are no patent or design registrations that protect the use of the 3D part. 

In a different field, software – which is also protected by copyright, has been RE'd for decades.  In the past, it has been allowed by many jurisdictions around the world but based on different principles.  Some allow it provided that the engineer did not have access to the owner's source codes.  Some, where RE would give access to non-protectable elements and where the copier has a legitimate purpose to copy (US: Sega Enterprises v. Accolade Inc.), and some for the sole purpose of creating interoperable functions (EU: European Software Directive).  Knowing where the products are that you are protecting, or where you will RE the product, is an important factor when determining what will pass as lawful. 

4.  Reverse engineering and contracts

Contracts are used in various ways to prevent others from reverse engineering an owner's product.  They can take the form of terms of use, license agreements, employee agreements and non-disclosure agreements.  As there is no right to breach these agreements, the owner of the IP is usually secure.  On the other side of the scale, it is important to know the legal landscape before one can rely on a contract completely, as the laws of the land may trump an agreement.  For example, the EU software directive allows RE for the sole purpose of developing interoperable products, therefore, any contracts that are concluded that contradict this directive may not hold up in court. 

Last words

Though RE can reward those who conduct it, it does have its own price tag.  Companies wishing to employ this process will need to dish out the initial capital to investigate whether the product is covered by any IP and in which territories.  They will also need to purchase the product, and then spend time and resources to reverse engineer it. 

It has been said that it is not so important what has been reverse engineered, but rather where it was done, and where it was challenged.  For this reason, it is of the utmost importance that you obtain the advice of an intellectual property attorney, who can give you refined advice about where you should conduct your RE, or how you should protect it as owner of IP.

The Affleck movie ends with a riddle, "If you only see where you can't go, you'll miss the riches below", which is utterly apt for reverse engineering.  For if the competitor didn’t look beyond the whole product, he would never get to unravel any of its hidden secrets. 

Back to top

Please note that our blog posts are informal commentaries on developments in the law as at the time of publication and not legal advice. You should place no reliance on our blog posts; we look forward to discussing your particular matter with you.