In this ‘Intellectual Property Application Series,’ I’ll be discussing trade secrets vs. Utility patents. I’ll explain what they are, the types of protection they offer, and why they are important tools for protecting your invention.
What a Trade Secret is:
A trade secret is a type of intellectual property that is broadly defined, but is generally a technique or device used to manufacture a product that is kept under secrecy from competitors. Technically, a trade secret can be defined as anything that gives a company a competitive edge and that can be kept secret. Trade secrets can be either commercial or industrial secrets. Trade secret rights do not expire but can be lost if the secret is discovered.
Trade secrets do not provide the exclusive right to exclude third parties from making commercial use of an invention. This type of protection is offered by patents alone. Instead, trade secrets offer protection from unauthorized disclosure and use, i.g. misappropriation.
What a Utility Patent is:
A utility patent application, as the name implies, is a patent application that protects an invention with utility, i.e. a useful function. There are specific requirements that must be met for a utility patent application filing to be accepted and for the invention itself to qualify for protection. The utility patent application filing requirements are defined by the USPTO. In addition, for an invention to qualify for utility patent protection, it must be confirmed as being either a machine, a process, an article of manufacturing (manufacture), or composition of matter. Alternatively, improvements on existing inventions also qualify for protection. Abstract ideas, laws of nature, and natural phenomena do not qualify for patent protection.
Protection Under the Trade Secret:
The United States offers trade secret protection as members of and under the regulations of the World Trade Organization (WTO) and the Agreement on Trade Related Aspects of Intellectual-Property Rights (TRIPS). There is no database of trade secrets, there is no registration process, and there is no procedure for “maintaining” a trade secret, as there is for a patent or trademark. There is, however, recourse for if a trade secret is violated.
The U.S. allows the option for trade secret disputes to be filed under state laws or under federal law, heard in federal courts. It should be noted however, that state laws regarding trade secrets may differ unless the state has adopted the Uniform Trade Secrets Act, as most states have. If the state has not adopted the UTSA, its regulations will be unique to that state.
If trade secret violation is proven, Courts can protect trade secrets by enjoining misappropriation or ordering parties that have misappropriated a trade secret to take steps to maintain its secrecy. In addition, Courts can order payment of a royalty to the trade secret owner, award damages, court costs, and reasonable attorneys’ fees.
The most important key for an owner to protect their trade secret is to take “reasonable steps” to maintain secrecy. If the secret is discovered because the owner did not take reasonable steps for secrecy, if the information is independently discovered, or if it becomes generally known, a trade secret is no longer protectable. Trade secrets do not expire so protection continues until discovery or loss.
Protection Under the Utility Patent:
An issued Utility Patent is valid for 20 years from the date of registration, provided maintenance payments are timely made. During the life of the patent, if infringement is expected, a civil suit can be filed with a U.S. District Court. If necessary, the case can even be appealed to higher courts. Once patent infringement is proved, the court will award damages, which can be significant.
It is important to understand that an issued patent does not grant the patent owner the right to make, use, or sell the patented invention. A patent attorney must conduct a freedom-to-operate search and analysis in order to determine this ability. Patent protection alone only grants the patent owner the exclusive right to prevent others from using and marketing the claimed invention.
Why Trade Secrets and Utility Patents are Important Tools for Protecting Your Invention:
Trade secrets are important tools for their ability to provide a very specific and unique type of protection. Some trade secrets are potentially eligible for protection under patent regulations, but most do not meet the criteria for being a patentable invention. Without the niche provided by this type of protection, trade secrets would be a lost asset and their commercial value would also be lost.
All issued patents allow the patent owner exclusive rights to protect their invention. Without the security provided by an issued patent, inventors may not be willing to put forth the effort required to bring their invention to market. In this way, utility patents are not only important to the inventors or companies that own them, but they are also invaluable to society which prospers from them.
Don’t leave a matter as important as your intellectual property to chance. Willing help in the form of an experienced legal team is here and is just a call away. We have patent attorneys located in Charleston, SC; Greenville, SC; and Knoxville, TN. Please contact us if have an interest in a trade secret or other intellectual property applications.
All issued patents allow the patent owner exclusive rights to protect their invention. Without the security provided by an issued patent, inventors may not be willing to put forth the effort required to bring their invention to market. In this way, utility patents are not only important to the inventors or companies that own them, but they are also invaluable to society which prospers from them.
Don’t leave a matter as important as your intellectual property to chance. Willing help in the form of an experienced legal team is here and is just a call away. We have patent attorneys located in Charleston, SC; Greenville, SC; and Knoxville, TN. Please contact us if have an interest in a trade secret or other intellectual property applications.