patent or trade secret?...trade secret due to an unsuccessful attempt at obtaining a patent....
TRANSCRIPT
Disclaimer: This presentation does not constitute legal advice or a legal opinion on any matter discussed. This presentation is for
educational purposes only. If you have a specific legal question, please consult with an attorney of your own choice.
Dan Chojnowski ([email protected])
Paul Engel ([email protected])
Patent or Trade Secret?
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Agenda
Patent Basics
Trade Secret Basics
Compare and Contrast
Procedural Mechanisms at the USPTO for
Information Gathering
Conclusion
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Patent Basics
Patents
Are active for a limited time (e.g. 20 years) to exclude
others from making, using, selling, offering to sell, or
importing the patented invention
Require public disclosure, at least at some point
Are not guaranteed; only about 60% of patent
applications are allowed by the USPTO and grant as a
patent, and the vast majority of issued patents have
claims which were narrowed during prosecution
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Typical Timeline for Obtaining a Patent4
Provisional
Application Filed
Publication
Active Examination
12 Mo.
18 Mo.
~ 29 Mo.
U.S. Non-Provisional &
PCT Applications Filed
~ 36 Mo. ~ 60 Mo.
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Trade Secret Basics
Trade Secrets
Derive economic value from not being readily known orascertainable
Almost any confidential business information that gives acompetitive advantage by virtue of its secrecy
Customer/contact lists, marketing plans, purchasingdetails, distribution systems, pricing sheets, etc.
Formulas, process parameters, QC test methods,application techniques, etc.
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Trade Secret Basics
Trade Secrets
Must be maintained as a secret through “reasonable efforts”
Document them!
Consider using a standard Invention Disclosure Form
Mark “Confidential”
Add Copyright notice (e.g., © 2005 Acme Products)
Restrict access
Secure location, need-to-know
Place all who know on notice
Use a confidentiality agreement with outsiders
Protect your trade secrets – or you lose them
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Trade Secret Basics
Trade Secrets
Susceptible to independent discovery and potentially
capable of being reverse engineered
Can be maintained forever
Trade secrets such as the formulas for WD-40® and Coca
Cola® have been maintained for years, as have countless
of other trade secrets that we will never know about!
But are difficult to maintain – especially with pervasive
challenges that have come with the advent of electronic data
and increased job hopping
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Compare and Contrast
Very few restraints on subject
matter
No publication required
Protection can last
indefinitely
Typically lower cost
Difficult to maintain
Susceptible to independent
discovery and potentially
reverse engineering
Limited eligibility of subject
matter
Publication required
20 year term
Typically higher cost
Not guaranteed
Prohibit others from making,
using, selling, offering to sell,
or importing the patented
invention
Trade Secrets Patents
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Compare and Contrast
Can be licensed forever
Damages for trade secret
misappropriation can include
both the actual loss caused by
the misappropriation and the
unjust enrichment.
Injunctions are a primary
remedy since once lost, a
trade secret is lost forever.
Can be licensed up to
expiration of the patent
The plaintiff in a patent case
must show actual damages,
and there is no recovery for
unjust enrichment (35 U.S.C.
§ 284).
Injunctions are difficult to
obtain.
Trade Secrets Patents
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Deciding Between a Patent and Trade Secret
Generally, patents are considered more economically valuable
than a trade secret.
However, decision makers are often cautious to avoid the
worst case scenario – foreclosing on the ability to maintain a
trade secret due to an unsuccessful attempt at obtaining a
patent.
Decision makers should consider evaluating the likelihood of
obtaining a patent through a patentability search/investigation,
which identifies the most relevant prior art and provides an
indication as to what claim scope can reasonably be achieved.
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Have Your Cake & Eat It Too (in the U.S.)
Procedural options are available at the USPTO to eliminate the
publication of your patent application before it grants as a
patent.
A Non-Publication Request can be made at the time of filing
the application if the Applicant certifies that the invention
disclosed in the application has not and will not be the
subject of an application filed in another country or under a
multilateral international agreement.
Request can be rescinded at a later time
This procedure will prevent the publication of an application
before a patent is granted.
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Have Your Cake & Eat It Too (globally)
With rare exceptions, an application for a patent will publish
before the USPTO even examines the application.
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Have Your Cake & Eat It Too (globally)
However, if we can increase the speed of examination to
reach a determination on patentability from the USPTO
before the application publishes, the Applicant can then
decide:
Whether to abandon the application before grant if a
favorable claim scope is not obtained; or
Accept the allowed claim scope and move forward with
foreign patent applications if desired (and within 12
months from earliest filing date).
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Have Your Cake & Eat It Too (globally)
The USPTO provides 2 procedural mechanisms to expedite the
examination of a patent application, which are available to any
Applicant:
Track 1 Prioritized Examination – For a $4,000 additional fee, the
USPTO will accelerate the examination of an application with the
stated goal of reaching a decision on patentability within 1 year.
File a petition with the USPTO requesting prioritized examination
Petition typically grants within 6 weeks
First Office Action typically received within 1.8 months from the grant of the
Petition
Decision on patentability typically rendered within 5 months from the grant
of the petition or about 6.5 months after filing the application - well before
the application publishes
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Have Your Cake & Eat It Too (globally)
Accelerated Examination – For a $140 additional fee,
the USPTO will accelerate the examination of an
application with the stated goal of reaching a decision
on patentability within 1 year.
File a petition with the USPTO requesting
accelerated examination.
Provide the USPTO with a preexamination report,
which includes a detailed search methodology, a list
of the most relevant references, and a detailed
explanation of how each claim is patentable over the
references.
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Summary
When deciding between a patent and a trade secret ask
yourself whether you have all of the information necessary to
make an informed decision. Consider:
Conducting a patentability investigation to understand what
claim scopes may be available;
If your organization is only interested in the U.S. market,
filing a non-publication request; and
If your organization is interested in the global market,
expediting examination to obtain a decision on patentability
from the USPTO prior to the publication of your
application.
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Thank you!
Exemplary Fact /Case SpecificQUESTIONS?
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