You arrive home from another long day at the office, have some dinner, start to catch up on the day’s news on the couch, and slowly doze off…
…you are back in the office, and one of your employees comes to you with an idea that will make your company boatloads of money. You call your attorney and tell him you want this idea protected, immediately, if not sooner.
“What’s the idea?”
“I can’t tell just anyone.”
“Well, if you want a patent, you are going to have to tell the whole world. Okay, let’s go about this another way: How hard would it be for your competitors to figure out your approach once you start using it to make your products?”
“Pretty easy. If they cut open one of our devices, they could figure out what we’re doing.”
“So, what do you want to do?”
You awaken in a cold sweat, realizing that protecting your company’s Intellectual Property (IP) really does keep you from sleeping well at night. Your “dreamy” attorney, however, asked at least some of the right questions regarding the protection of your company’s IP.
The first question is one of disclosure. If you want a patent, trademark, or copyright, then you are required to disclose the idea to governmental agencies, in statutorily gory detail. But if you are reluctant to even tell your attorney about it, getting a patent may not be the best way to protect that blockbuster idea.
And assuming that you are willing to divulge the inner workings of your concept, remember that not everything can be patented. Patents can protect only four basic categories: methods; devices; articles produced by giving raw materials new forms, qualities, properties, or combinations; and compositions of matter. You cannot obtain patent protection on an equation (Albert Einstein could not patent E = mc2). Similarly, you can’t patent something that occurs in nature.
Further, patent infringement is solely a question of federal law, and an infringement action can only be undertaken on an issued patent. That means it may be a couple years before you can really stop someone else from using your idea.
If disclosure is not something you are comfortable with, keeping the idea as a trade secret may be a better option. Frankly, although patents are a perfectly good mechanism to protect your IP assets in some situations, there are just some things better left unsaid.
Trade secrets have the ability to last longer than patents. Not to mention, trade secrets are essentially free of charge. Coca-Cola’s secret formula (and their secret ingredient, “Merchandise 7X”) has been a highly guarded secret for over 125 years (although Coke’s formula may have been recently revealed). If Coca-Cola had obtained a patent on the specific composition of ingredients when it was first developed, that patent would have expired in the early 1900’s.
Seems like an easy solution, right? Keep everything as trade secrets. No attorney costs, no time wasted with patent offices, just take the idea, mark it “company proprietary” and only let certain people access it.
The problem with that tactic goes back to your visionary counsel’s second question: Can someone figure out the idea from your product? If so, it really isn’t much of a secret. And it is almost impossible to protect.
Although neither is perfect, a well-rounded IP protection program includes both patents and trade secrets More importantly, developing this program should keep someone ELSE up at night.