A patent can be a very effective way to protect an invention. Machines, processes, compositions of matter and manufactures can all be protected by a patent. Having a strong patent gives the patent owner a virtual monopoly on his or her invention for up to 20 years. Patents are not the only way to protect an invention. Trade secret protection may be the better option in some circumstances.
A patent is obtained by disclosing an invention to the United States Patent and Trademark Office (USPTO) via a patent application. The application must describe the invention in such a way that someone skilled in the relevant art would be able to understand and practice the invention. The USPTO, upon reviewing the application, will compare the disclosed invention to the prior art (which can be any publication that exists before the filing date of the application) and determine whether the invention is novel and nonobvious. If so, the USPTO will issue a patent on the invention.
A challenge can arise with patenting an invention if the USPTO does not view the invention as novel, views it as obvious or determines it constitutes unpatentable subject matter, for example, an abstract idea. Even if the invention is considered patentable, the scope of protection may be relatively narrow. Consequently, an inventor may ultimately disclose an invention to the public through the patent process without having any real protection on the invention.
In some situations, trade secrets may be a better option for protecting an invention. A trade secret is generally any commercially valuable information that is not publicly known where reasonable effort is taken to preserve its confidentiality. This is a major distinction between patent protection and trade secret protection. Although patent protection is granted in exchange for disclosing the invention to the public, trade secret protection is granted to those who take reasonable steps to keep their invention secret.
Trade secrets may be valuable for inventions that are not “readily ascertainable by proper means.” This is because reverse engineering a trade secret is perfectly legal. For example, there is generally nothing illegal about a party purchasing a product and disassembling it to determine how it works. If an invention is easily reverse engineered, the value of trade secret protection is low. However, if a product or method is not easily reverse engineered, then trade secret protection may be an effective approach to protecting technology. Coca-Cola is a good example of trade secret protection, since the company elected to protect its Coca-Cola formula via trade secret rather than patent. Although they could have patented their formula, the protection afforded by the patent would have run out in about 20 years. Since the formula for Coca-Cola was not easily reverse engineered, the formula has been protected for well over 100 years. This highlights another difference between patents and trade secrets. Whereas patent protection lasts for only 20 years, trade secret protection lasts as long as the trade secret remains a secret. If a party chooses to protect their invention by trade secret, they must take reasonable steps to keep their trade secret a secret. These steps could include the proper use of nondisclosure agreements, limiting access to the trade secret, encrypting files, providing adequate security, marking documents as confidential, etc.
Patents and trade secrets can be valuable tools for protecting inventions. As a general rule, if the invention is easily reverse engineered, then patent protection is likely the best option. If the invention is not easily reverse engineered and not likely to result in strong patent protection, then trade secret protection may be the better option. Before choosing the course of protection, however, it is strongly recommended to contact an intellectual property attorney who is well versed in both patent law and trade secret law. Parsons Behle & Latimer has intellectual property attorneys who will help you determine the best option for protecting your invention whether it be through patent or trade secret protection.
