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http://www.natlawreview.com/article/trade-secret-or-patent-choice-not-always-simple Introduction: This morning we are interviewing
Denver-area patent attorney Mark Trenner. Mark has been practicing as a patent attorney
in Colorado for almost 14 years; the past 9 years at Trenner Law Firm. While his practice
focuses primarily on helping small businesses protect their inventions with patents, Trenner
Law Firm assists clients build out all aspects of their intellectual property portfolio,
including copyrights, trademarks, and trade secrets.
Interviewer: The National Law Review recently published an article that appeared in the
Orange County Business Journal titled "Trade Secret or Patent -- The Choice is not Always
Simple." Please start by explaining the difference between a trade secret and a patent.
Patent Attorney: Sure, a trade secret is anything that can be maintained as a secret. If it
can be reverse engineered, then it can't be protected as a trade secret. So for example,
a recipe might be protected as a trade secret. Think of the Bush's Baked Beans commercial.
Interviewer: Where the dog wants to give away the family recipe.
Patent Attorney: Right, and the owner always stops the dog just in time. That's because
if the recipe were to be broadcast on national television, it would be considered to be in
the public domain and no longer subject to trade secret protection.
Interviewer: And what about patents? Patent Attorney: Well patent protection is
afforded by the government for inventions for a given time period -- typically 14 years
for design patents and 20 years from the filing date for utility patents. But this protection
is granted in exchange for what is sometimes called a "limited monopoly." That is, the
patent owner has the exclusive right to make, use and sell the invention in the United States
during the term of the patent. And in exchange, the government requires that the patentee
disclose every aspect of the invention. Interviewer: I see, so a patent is really
the opposite of a trade secret. Patent Attorney: In a way, because the inventor
is required to disclose the invention in sufficient detail that someone having ordinary skill
in the art can practice the invention. Interviewer: Based on the difference between
patents and trade secrets, the choice seems self-evident.
Patent Attorney: You mean that you can only apply for a patent for something you can't
trade secret -- and you can only trade secret something that you can't patent. Not necessarily.
Interviewer: I guess that's why the article says "The Choice is not Always Simple" right?
Patent Attorney: The article supports what you just said - that in some cases that not
every type of information can be protected by patent, or trade secret, or both. But as
the article correctly explains, sometimes the information may be capable of being protected
both by trade secret and patent, but not both at the same time.
Interviewer: How so? Patent Attorney: The article explains that
it may be wise to publish the relevant information. Publication should prevent others from applying
for patent protection for the same invention. Interviewer: And what about trade secret?
Patent Attorney: The article offers a strategy, where the applicant for a patent files a non-publication
request so that the Patent Office does not publish the patent. As such, the information
can be maintained as trade secret. If the patent does not issue, or the applicant wishes
to maintain the information as trade secret, the patent application is abandoned and therefore
never publicly disclosed. Or when the patent does issue, it is protected by the patent
(albeit no longer a trade secret). Interviewer: So you're not required to publish
your patent application. Patent Attorney: Generally, the Patent Office
will publish your patent application 18 months after the filing date. But for those first
18 months, the patent application is maintained in confidence and cannot be accessed by the
public. In addition, an applicant can file a request for non-publication, in which case
the Patent Office will not publish the patent application unless and until a patent is issued.
But an applicant cannot file such a request if the patent application is being filed outside
the United States. Then, the application must be published.
Interviewer: I see, that's kind of confusing. Patent Attorney: Yes, and the article correctly
explains that these are very important business decisions that should be discussed with a
qualified attorney to determine what is best given a particular situation.
Interviewer: Thank you, I think that's all we have time for today. For more information,
be sure to visit Trenner Law Firm's website at www.us-patentattorney.com and Mark Trenner's
blog over at www.ipatentattorney.org