When you have a new invention, the right question to ask at the outset is whether you want to consider patenting it. This is important because many common activities in research and commercialization can create a bar to patent protection or at least start a one-year clock by which a patent must be filed. Some of these common activities include presenting or publishing on the technology, testing the technology with a customer or commercial partner, selling product, or publicly using the technology. While there is so much early focus on preliminary patent questions, a thorough analysis should also include an assessment of whether trade secret protection may be suitable.
In fact, even where a product may be patentable, there can be aspects of the technology kept as trade secret. To file a patent, there is an obligation to fully describe how to make and use the invention. Further, there is an obligation to disclose the best mode of the invention. In some circumstances that may mean that you must choose between patent and trade secret protection. In other circumstances, you may be able to seek patent protection on one aspect of a new technology while keeping other aspects of the technology secret. There is often technical know-how that is acquired while developing patentable technology that may be subject to trade secret protection. Additionally, there are instances where certain technologies and improvements are not patentable, but a commercial advantage can be gained and innovation can be monetized by keeping aspects of the technology under trade secret protection.
Certain basic criteria must be met to qualify for trade secret protection. Those criteria typically include at least the following:
- Information that actually or potentially provides independent economic value from not being generally known;
- The owner has taken reasonable measures to keep the information secret; and
- The information is not readily ascertainable through proper means.
Such information can often include scientific, technical, engineering, economic, financial, and business information. A unique aspect of trade secret protection is that there are both state and federal protections available. This means that there is the potential for both state and federal actions to preserve a trade secret. This can also complicate whether the information qualifies as a trade secret or whether additional elements may be required to establish trade secret protection in a particular state.
One consideration particularly applicable to nanotechnological inventions is whether there are aspects that are difficult to reverse engineer. There is certainly some information that can be readily reverse engineered through analytical techniques and other information that is extremely difficult to reverse engineer. Considering what aspects of your technology would be difficult to reverse engineer is a great place to start in evaluating whether trade secret protection may be suitable. The answer to that question may inform what parts of your technology you want to make public.
To keep trade secret protection a possibility, it is important to have precautions in place at all stages of research and development. What precautions are needed vary based on many things, including the nature of your research (public vs. private), nature of research facilities, who has access to sensitive information, etc. Certain precautions can always be helpful: limiting access to confidential information; having non-disclosure agreements in place, having secured and limited access to research facilities or at least labs where confidential research occurs; and having a process in place for early identification of potential trade secret information. Whether trade secret protection is possible and advisable for a particular technology can be evaluated with your intellectual property attorney.
This is the final post in a four-part series. The first three posts can be accessed at the following links: “Protecting Your Nanotechnology Inventions – Part 1: Defining Your Space”; “Protecting Your Nanotechnology Inventions – Part 2: Defining Your Invention”; and “Protecting Your Nanotechnology Inventions – Part 3: Enabling Your Invention.”