Palo Alto, CA asked in Patents (Intellectual Property) for California

Q: How do I know if I should file for a patent or go with the trade secret route instead?

2 Lawyer Answers
Karima Gulick
Karima Gulick
  • Patents Lawyer
  • Irvine, CA
  • Licensed in California

A: It really depends on your business, invention, and product or process. There is no one size fits all answer for this. Is your intellectual property even patentable? Would you want to license it or keep everything in house?

Kevin E. Flynn
Kevin E. Flynn
  • Patents Lawyer
  • Pittsboro, NC

A: If what you sell can be readily reverse engineered, then you should get a patent. As time has gone on, more and more things can be discerned by using sophisticated tools to dissect a product and figure out how it works. If there is some chance that you could keep your good idea a secret while you make money from it, then a trade secret is an option.

For example, if you are Willie Wonka and have a special way to make candy bars that no one outside of the factory knows or could readily discern from looking at the candy bar, then it may be good to keep as a trade secret. The secret way of getting bubbles to form in Thomas' English Muffins to form nooks and crannies is an example of a trade secret that is considered valuable.

The upside of a trade secret is that it may last for a really long time, much longer than the limited term of a patent. The bad news is that if someone else comes up with the same idea without getting information leaked inappropriately, then your trade secret does not preclude them from using the idea or getting a patent on it.

Note that under 35 USC Section 273, you would have continued rights to use your trade secret after someone later patents the same idea but this would limit your right to license others to use your trade secret.

With the changes in the patent laws in 2012/2013 it is believed that you can now seek a US patent for a trade secret after using the trade secret for a while. You can hedge your bet by filing a patent application with a non-publication request and waiting to see how the negotiations with the Patent Office turn out. If you do not like what they offer as they think your idea is too close to some prior art, you can decline to allow the patent to issue and just go back to having the trade secret as this process won't lead to publication of your idea.

You should consult with an experienced patent attorney to dig deeper into these issues. As Ms. Gulick noted, it may be best to keep your idea as a trade secret if the idea would have a difficult time making it through the patent process. This is the type of question that takes a detailed discussion with a patent attorney.

A great question, thanks for sharing.

Kevin E Flynn

1 user found this answer helpful

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