What to disclose? Patents v trade secrets
- publish258
- Feb 9, 2024
- 2 min read
Updated: May 22
Originality? Exclusivity? Detection? Leakproof? For technical solutions, Jens Pilger asks four questions about what to disclose and what to keep secret
Jens Pilger
How does the balance now stand between patents and trade secrets, in particular with respect to their co-existence as IP assets? When evaluating how much technical information to disclose, a mixed approach may be especially effective: some aspects of an IP asset lend themselves more to patent protection, while others are better kept secret.
A patent gives you exclusivity and security. However, what you disclose might let your competitors find a way to work round your invention.
A trade secret is less formal. It is up to you to manage it as the owner. Kept well, it costs less, lasts longer and makes workarounds harder. Once lost, however, it has gone forever.
So ask four questions about what to disclose and what to keep secret.
Originality: could someone else have the idea?
If technical options are limited and someone else could find a solution, then a trade secret is of little worth. Even worse, a trade secret is no defence if someone else then gains a patent. If it’s unlikely anyone else will figure you out, a trade secret then becomes an advantage.
Exclusivity: how broad is your grant?
If you can gain broad protection and deter workarounds, then opt for a patent. If, instead, you only gain limited exclusivity, then you may well prefer a trade secret.
Detection: how easy are copies to spot?
Be sure you can detect any copying. If a solution lies deep in a process hidden in a factory, a trade secret is often more effective.
Leakproof: can your invention be kept secret?
If it’s easy to make a copy of your idea or if you’re worried about whether you can restrict who knows about it, then opt for the security a patent. For a trade secret, you have to be sure in advance that you can tightly manage it.
In practice, patents and trade secrets often complement each other. You can evaluate your solutions case by case, identifying which aspects are suitable for disclosure and which for non-disclosure. In this way, a package can be formed of patents and trade secrets, so giving you the most efficient protection of your IP as an asset.
• The full version of ‘Patents v trade secrets’, an article by Jens Pilger, partner at DHS, appears in ‘Winning with IP: Managing intellectual property today’, fourth edition, Novaro Publishing, November 2023. See here for details.
