Tuesday, January 10, 2017

Patenting when you have a trade secret to protect



A patent allows the holder to have a monopoly for 20 years over the invention claimed within the patent. In exchange, the patent holder must publicly disclose the claimed invention, including the best mode to practice the invention. 

However, some companies and inventors will have trade secrets about the practice and implementation of their invention. For example, the recipe for Coca Cola is a trade secret, as is the recipe for Kentucky Fried Chicken. Colloquially, these trade secrets are referred to as the “secret sauce”. If these secrets are revealed, then the company/inventor(s) will lose their competitive advantage in the marketplace. 

So the question is: How does a company/inventor(s) protect its valuable intellectual property (IP) without giving away the secret sauce?

Firstly, the company/inventor(s) should examine their IP to see whether any of it can be disclosed in a patent. The central question to be asked in such an examination: Can the IP be described with enough detail so as to enable the company/inventor(s) to obtain a patent, but with insufficient detail to still retain competitive advantage? If not then the company/inventor(s) should not be filing a patent.

If it is possible, then what should be done? Three possible courses of action when describing the IP are: 

  1. Generalize: The company/inventor(s) should be able to generalize the invention without giving specifics. For example, in the case of a software invention the company/inventor(s) can describe functional blocks or modules which take in inputs and process those inputs to produce outputs, instead of actual lines of code.
  2. Disguise: The company/inventor(s) should look to disguise the specific practice being adopted. For example, if the company/inventor(s) use process A in an actual implementation, then the company/inventor(s) should disclose as many alternative implementations or embodiments as possible to process A. This makes it difficult for a competitor to determine which implementation is being actually used. 
  3. Conceal: If the company/inventor(s) has adopted certain processes, then the specific parameters of those processes should be concealed in the patent disclosure. For example, if a process calls for the repetition of one step 10 times, the company/inventor(s) should disclose repetition of the step for a number of times.
Intelligent patent practice can help improve the value of an invention tremendously, while preserving or even enhancing competitive advantage. Determining whether IP can be protected through patents, and then adopting the steps such as described above can go a long way towards achieving these goals.