These forms of intellectual property (IP) form the backbone of many IP strategies in the food industry. However, they are often treated as mutually exclusive rivals, rather than the complementary tools they really are.
Perhaps the misconception arises because these forms of IP are usually discussed by comparing them to each other. For example, a patent will give you 20 years of monopoly protection, while a trade secret lasts indefinitely (provided it remains secret). In consideration for the monopoly right conferred by a patent, you must fully disclose your invention and the best way of carrying it out. But nobody outside your organisation need know your trade secret. Like all forms of registrable IP, a patent will cost you a lot of money upfront. You will need a patent attorney to draft the specification defining your monopoly rights, and official fees will be levied at depressingly frequent intervals. In contrast, a trade secret can be maintained at the cost of implementing a few basic procedures in your organisation. But trade secret protection won’t protect you from independent discovery of your invention. Once disclosed, even innocently, anyone is free to use it.
Many IP strategies begin with deciding whether a major innovation should be patented or kept as a trade secret. But even when one form of IP protection is selected, there are opportunities for a smart organisation to make use of the other. For example, imagine you have devised a food product that meets the criteria for patentability, i.e. it is new and inventive. You are concerned that your competitors could figure out the basic process by which you make it, so you decide to patent the product. During the patent process you must disclose what you understand at the time of filing to be the best method of making the product. No secrets anymore then. But wait! The information in the patent specification reflects only what was known at the time of filing. This is likely to be based on lab scale or pilot plant experiments. Once your product goes into production, you may discover all sorts of minor variations, preferences and tricks that give a superior product. Say your patent specification directs the reader to heat ingredients at 80 to 100°C for 30 to 60 minutes then cool to room temperature. Once in production, you discover that the perfect product is actually obtained if you heat at 100°C for 30 minutes. Heating at a lower temperature for longer causes quality control problems. This sort of know-how is valuable IP that could be kept as a trade secret. While your patent specification may have told your competitors the basics of how to make your product, it does not reflect your subsequent understanding and refining of the process.
Think of it this way – filing a patent is like putting your gold in a vault. Everyone knows it’s there, but they can’t get to it easily. Keeping new developments as trade secrets is like putting the gold into a particular safe deposit box. It may not stop your competitors finding it, if they manage to breach the vault, but it will slow them down because they’ll have to investigate all of the safe deposit boxes.
What happens if R&D after you’ve filed your patent application indicates that the best commercial product is actually outside the scope of your patent protection? Have you wasted your money filing the patent application? Not necessarily. Firstly, the process of drafting the patent application may have significantly contributed to your R&D program. When drafting the patent specification, your patent attorney will ask a myriad of questions about the invention to establish its boundaries, advantages and limitations. Many of these questions can only be answered by experimentation, and some may inspire new lines of enquiry leading to further innovation. Therefore, even if the patent does not eventuate, or does not cover your commercial product, most organisations feel that the process of defining the invention has refined their own understanding of it.
Secondly, if you retain the details of your commercial process as a trade secret, your competitors may not realise that this is actually outside of, and therefore unprotected by, your patent. They assume the gold is in your vault, not realising it’s actually buried in the yard behind the vault. It may be less protected than if it were inside, but the presence of the vault means that competitors are less likely to start digging up the yard to find it.
So patents and trade secrets are not really rivals. A good IP strategy can use each form of IP to complement the other to the advantage of your business.