Patent vs Trade Secret

Patent vs Trade Secret

Patent or Trade Secret?

The standard rule is, if an invention can be reverse-engineered, it should be protected with a patent; if it can’t be reverse engineered, then it can be kept as a trade secret. The advantage to a trade-secret is that it is free (only requiring some due diligence in maintaining confidentiality) and protection theoretically lasts forever, or as long as the confidentiality is maintained. Patent applications, on the other hand, are published for the world to see after 18 months. But how can you enjoy trade-secret protection, while having patent protection on the same invention as a backup?

The answer is that a patent application can be filed with the Patent Office for the invention that is to be the subject of the trade-secret, and if it is then withdrawn before its publication date at 18 months from filing (16 months in Canada or before preparations for publication have begun), then it will never be published and disclosed to the public. Once the first application is withdrawn, similar matter can be re-filed, only to be withdrawn again 18 months later. To avoid the costs of a regular US filing, a US provisional application can be filed and withdrawn before 12 months when it expires. If the secret ever gets out, and patent protection is needed, the patent can simply proceed to examination as filed. Of course, the caveat is if there is evidence that the invention was publicly disclosed such that it could be reverse engineered, it may be challenged on the basis of prior disclosure to the public if it one day proceeds to grant.

In addition to the “patent insurance” you have now received for your trade-secret, for the entire time that a patent application is filed you can enjoy the benefit of “patent pending” on your marketing literature.

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