Practical Considerations for the Protection of Technical Innovations: Patents and Trade Secrets

A company’s technical innovations may be protected through patents or trade secrets, and a fully developed intellectual property strategy will rely on both systems.

Patents

A patent grants the owner a monopoly right for up to 20 years, subject to the payment of renewal fees. In exchange for the time-limited monopoly, the patent document is published, thereby telling the public how the invention works.

The process from patent application to granted patent can be lengthy and the application will undergo a rigorous examination process. For a patent to be granted an invention must meet various requirements, the key ones being that it must be new (not publicly known) and demonstrate an inventive step (must be a non-obvious advancement on existing public technology).

Trade Secrets

Trade secrets are protected in the UK by two parallel regimes, specifically: the common law of confidence and the statutory regime under the Trade Secrets Regulations. A trade secret is defined in the Trade Secret Regulations as being:

  • secret information (not public),
  • that has commercial value because it is secret, and
  • has been subject to “reasonable steps” to maintain secrecy.

In contrast with patents, trade secrets do not confer a monopoly right. However, trade secrets can be maintained indefinitely (as long as the information is not disclosed), and there is no rigorous registration process as is the case with patents. Furthermore, trade secrets can also encompass non-technical material such as commercially sensitive buyer/seller data.

Patent or Trade Secret?

Assuming that a technical innovation has been identified through the invention capture process, a decision then has to be made on whether to pursue patent protection or maintain the technical information as a trade secret. An internal review process can be helpful to make an assessment on the best strategy. As part of such a process, reviewers may, for example, consider the following:

  • Will the invention be publicly disclosed at some point, for example as part of a sold product? If so, the invention will not be protectable as a trade secret after its public disclosure, and consideration should be given to filing a patent application prior to the disclosure date.
  • Is the invention likely to be patentable? For example, the company may be aware of prior art that could be damaging to patentability, or the innovation may fall under a category of subject matter that is excluded from patent protection. In such cases it may be preferable to forego filing a patent application and instead maintain the innovation as a trade secret.
  • How easy will it be to identify patent infringement? If a third party can implement the invention in a way that is not derivable from the end product then it may be difficult to identify whether your invention has been used.

There is also a third option, generally referred to as a “defensive publication”. A defensive publication is an intentional public disclosure that can function as prior art that aims to prevent third parties from patenting specific innovations.

The downside is that it will also prevent you from patenting the disclosed technology, and the information will not be able to benefit from trade secret protection after its disclosure, therefore caution is necessary. That said, it can be a useful strategy to cheaply hinder competitors.

 

Internal Procedures

To ensure that a company benefits from trade secret protection, they should implement internal trade secret management procedures that aim to meet the above requirements.

At a basic level, these procedures may include the following:

  • Policies relating to the use of non-disclosure agreements.
  • Access controls to ensure that confidential information is only available to specific employees as required to undertake their work.
  • Employee education and training on confidentiality, to ensure that employees are aware of their obligations on maintaining secrecy of specific information.

A company may also wish to implement invention capture procedures, with a view to documenting potentially patentable material. The technical documentation may then be passed on to a patent attorney, to enable them to prepare a patent application.

The technical documentation generated as part of the invention capture process should be subject to the internal trade secret management procedures. If a decision is made to forego filing a patent application, then the technical documentation prepared during invention capture may simply be maintained internally as a company trade secret. Therefore, both trade secret and invention capture procedures may overlap, and complement each other.

 

Conclusions

It is possible for technical innovations to be protected through patents or trade secrets. There are pros and cons to both approaches, and there is unlikely to be a “one size fits all” approach.

Developing a culture within an organisation that positively and proactively handles intellectual property can promote innovation, and can ensure that technical innovations are captured and protected, with internal invention capture and trade secret management procedures playing a valuable part in the process.

 

At Scintilla, we help innovative companies get a grip on their intellectual property. Our unique commercial approach combines registration of patents and trade marks with strategic input so that IP can be a springboard for business growth. If you would like to discuss your IP needs, do contact us or book a free initial consultation!