If you work for a technology company, you may already be familiar with patents as a means for protecting intellectual property (IP). But you may encounter circumstances where filing for patent protection may actually erode your competitive edge.
An issued patent allows the assignee (the party that owns the patent) to exclude others from practicing the invention for a period of time, up to 20 years. In exchange for this limited monopoly, the preferred method of practicing the invention must be disclosed in the patent—failure to do so is a clear path to having the patent disallowed. Patents are most commonly allowed for inventions of new and useful machines, processes, articles of manufacture, and compositions of matter (utility patent); but may also be allowed for an ornamental design (think of the classic Coke bottle) or a new variety of plant. Patents are issued by country, and provide protection against unlicensed manufacture and use within the country of issuance only.
Sounds good, right? The drawback is that the preferred method of practicing the invention must be disclosed, which means sharing this information with your competitors. For a manufacturing or assembly process—something difficult to prove in a court—disclosing patentable inventions may actually help your competitors and offer little, if any, real protection.
This is where trade secrets should be considered. The value in trade secrets is that you are not compelled to disclose them, as is the case with patents. There is no legal protection per se granted to trade secrets. Most often, trade secrets are classified as confidential information, and violation of a non-disclosure agreement through the unauthorized use or sharing of trade secrets offers some (albeit minor) opportunity for recourse. Nevertheless, I have used trade secrets for novel manufacturing methods that I do not want to share publicly.
By using patents and trade secrets effectively, you can help your company build a strong and valuable IP portfolio.
Cheers and GO DUCKS!
Dave Edlund, PhD '87
david@e1na.com
Duck Alumni Career Blog
November 9, 2015