Patent It Yourself - PDF Archive

ChaPter 1 | INTRODUCTION to PATENTS and Other INTELLECTUAL PROPERTY | 27
used to prevent anyone else from commercially exploiting
the underlying information.
CAUTION
If you maintain an invention as a trade secret and
put it into commercial use, you must file any patent application
within one year of the date you first used it commercially. If
you wait over a year, any patent that you do ultimately obtain
will be held invalid if this fact is discovered. More on the “oneyear
rule” in Chapter 5, Section E.
The following material discusses the pros and cons of
each form of offensive rights.
3. Advantages of Trade Secret Protection
Often I advise people to choose trade secret rights over
those afforded by a patent, assuming it’s possible to protect
the creation by either. Let’s look at some of the reasons why:
• The main advantage of a trade secret is the possibility
of perpetual protection. While a patent is limited by
statute to 20 years from filing and isn’t renewable, a
trade secret will last indefinitely if not discovered.
For example, some fireworks and sewing needle trade
secrets have been maintained for decades.
• A trade secret can be maintained without the cost or
effort involved in patenting.
• There is no need to disclose details of your invention
to the public for trade secret rights (as you have to do
with a patented invention).
• With a trade secret, you have definite, already existing
rights and don’t have to worry about whether your
patent application will be allowed.
• Because a trade secret isn’t distributed to the public as
a patent is, no one can look at your trade secret and try
to design around it, as they can with the claims of your
patent.
• A trade secret can be established without naming any
inventors, as must be done with a patent application.
Thus no effort need be made to determine the proper
inventor and a company needn’t request its inventoremployee
to assign (legally transfer) ownership of the
trade secret to it, as is required with a patent application.
• A trade secret doesn’t have to be a significant,
important advance, as does a patented invention.
• A trade secret can cover more information,
including many relatively minor details, whereas
a patent generally covers but one broad principle
and its ramifications. For example, a complicated
manufacturing machine with many new designs
and that incorporates several new techniques can
be covered as a trade secret merely by keeping the
whole machine secret. To cover it by patent, on the
other hand, many expensive and time-consuming
patent applications would be required, and even then
the patent wouldn’t cover many minor ideas in the
machine.
• Trade secret rights are obtained immediately, whereas
a patent takes a couple of years to obtain, in which
time rapidly evolving technology can bypass the
patented invention.
4. Disadvantages of Trade Secret
Versus Patenting
Before you stop reading this book, please understand that I
spent three years writing it and thousands of hours updating
it for a good reason. Or put more clearly, there are many
circumstances in which trade secret rights have significant
disadvantages. In these contexts, using the rights provided
by a patent is essential.
The main reason that trade secrets are often a poor way
to cover your work is that they can’t be maintained when
the public is able to discover the information by inspecting,
dissecting, or analyzing the product (called “reverse
engineering”). Thus mechanical and electronic devices that
are sold to the public can’t be kept as trade secrets. However,
the essential information contained in certain chemical
compositions sold to the public (cosmetics, for example),
and in computer programs (assuming they’re distributed
to the public in object code form), often can’t be readily
reverse engineered, and thus can be maintained as trade
secrets. However, because very sophisticated analytic tools
are now available, such as chromatographs, Auger analyzers,
spectroscopes, spectrophotometers, scanning electron
microscopes, and software decompilers, most things can be
analyzed and copied, no matter how sophisticated or small
they are. And remember, the law generally allows anyone
to copy and make anything freely, unless it is patented
or subject to copyright coverage, or unless its shape is its
trademark, such as the shape of the Photomat huts, or
unless its shape has become so well-known or distinctive as
to be entitled to trade dress rights. (See Section R, below.)
Strict precautions must always be taken and continually
enforced to maintain the confidentiality of a trade secret.
If your trade secret is discovered either legitimately or
illegally, it’s generally lost forever, although you do have
rights against anyone who purloins your trade secret by
illegal means. You can sue the thief and any conspirators
for the economic loss you suffered as a result of the thief’s