Obtaining patents is often a key objective of many IP strategies. However, getting a patent is not always the right solution, even when it is possible to obtain one.
The heavy costs of acquiring and maintaining patents are certainly well-known issues to consider before committing to obtain patent protection. However, they are not the only considerations.
Before deciding to patent an invention, be sure to ponder the following questions:
Technology obsolescence: What is the useful lifetime of your invention compared to the potentially lengthy time it will take to get a granted patent?
Competitive position: How does your invention stack up with the competitive approach, considering both cost and performance?
Alternatives: What are the alternatives to your invention? You can test the strength of your ideas yourself by brainstorming other approaches. If you can think of at least one viable work-around to your invention, so can the competition.
Enforcement: How likely is it that you’ll have to play defense? Against whom? And do you have the time, determination and budget to support the costs of assertion?
But perhaps, even more fundamentally, would a patent really be an effective way to protect your IP? For example, how easily could your invention be reverse-engineered? That is, if a 3rd party practiced your invention, could you detect it? If not, it might be practically impossible to enforce a patent. Many manufacturing processes can’t be detected once the finished product is made and it may be better not to patent them. Furthermore, owning a patent might actually work against your interests by disseminating your proprietary information.
A properly designed trade secret program may be more desirable than patents for many inventions, particularly for embedded technology or certain manufacturing processes. Trade secrets have a number of advantages over other forms of IP such as:
Potentially unlimited lifespan: Whereas patents have a finite lifespan, trade secrets may persist as long as they are kept secret. Some trade secrets are famous for their longevity, such as the Coca-Cola® formula, which has lasted for more than a century, and the metal composition of Zildjian® cymbals, which is said to have been held secret since the 1600’s.
No disclosure required: Patents require “enablement”, i.e. a full disclosure of how to make or use the invention that is published in the specification of the patent. In contrast, trade secrets are just that – secrets that never need to be publically divulged.
No examination: Before a patent is granted, it is evaluated for novelty, utility and obviousness. However, if an invention is valuable but does not meet all of these standards, it can still be protected as a trade secret.
Controllable: Just like patents, but unlike defensive publications, trade secrets create documented ownership that enable licensing or controlled disclosure of technology.
It’s a common misconception to think that your company has a trade secret program simply because it has sensitive information it has managed to keep from competitors. Boldly declaring all company confidential information to be trade secret, doesn’t work either. Among other precautions, it takes a number of “reasonable efforts” such as a formal policy, employee training, and certain specific security precautions to properly protect trade secrets.
Additionally, trade secrets are not without risk. A competitor might independently re-invent your trade secret and practice it! Trade secrets may be difficult to enforce too, and the level of legal protection they afford varies from state to state.
A properly designed trade secret program can help mitigate, or even eliminate some risk. If you are contemplating trade secret protection as a part of your IP strategy, please contact Bill Petrow at mainline (Ext. 215), or firstname.lastname@example.org.