Some might think that patents and trade secrets are mutually exclusive forms of intellectual property protection, and they would be partially correct. After all, a trade secret is information that is kept, well, secret. Obtaining a patent, on the other hand, requires the public filing of an application that describes the invention in detail. It would appear then, that one could never obtain both patent and trade secret protection for any particular subject matter. But a recent lawsuit by surgeon-turned-inventor Dr. Enrico Nicolo against the New York law firm Patterson Belknap shows how, in some circumstances, these two forms of intellectual property can coexist and fill gaps in the protections each offers.

Dr. Nicolo’s case is the latest in a series of lawsuits he targeted at Ethicon Endo-Surgery, a medical device and surgical instrument manufacturer, and its representatives. In a plotline that dates back to the 1990s, Dr. Nicolo alleges repeated, premeditated theft of intellectual property.

Dr. Nicolo obtained or applied for a number of patents covering medical device technologies and met with Ethicon representatives several times to explore a business collaboration related to his inventions. Ethicon always turned him down, but he claims Read More