Commercialization of R&D Results: How to Prepare For The Early Stages

Methods for Protecting an Invention

Commercialization of R&D Results: How to Prepare For The Early Stages

Some of the Concepts that will be discussed during the workshop:

Patent Trade secretLicensingStart Up BusinessAngel Investor

Venture Capital Disclosure of an InventionMarketabilityCommercial Potential Prototype


Methods for Protecting an Invention

Trade Secrets Vs. Patents

• Trade Secret Any information, design, device, process, composition, technique, or formula that is not known generally and that affords its owner a competitive business advantage.

• Things that can be considered as trade secrets Chemical Formulae, such as the formula used to make currencies' paper;

Manufacturing Processes, such as the process used to form the eyes in sewing needles; and


Chemical recipes involving both formulae and process, such as the recipes used to make soft drinks, cosmetics, chemicals. And artificial gems. In such case, even if the ingredients of a chemical recipe are publicly known, the method of combining the ingredients and their sources can still be a trade secret.

• Types of Trade Secret

Trade Secrets consisting of technical information, such as the examples mentioned above; and

Business-Information Type Trade Secrets, such as customer lists, names of suppliers, and pricing data.


• Protection of Trade Secrets

Law will enforce rights to both types of trade secrets, provided that the information concerned was kept confidential and can be shown to non- public knowledge and truly valuable.

The degree of these offensive rights that are afforded by the law to owner of a trade secret is proportional to the business value of the trade secret, and how well the owner actually kept the secret, which means if a company is sloppy about its secrets, the court will reject its request for relief. Conversely, a company that takes reasonable measures to maintain the information as a secret will be afforded relief against those who wrongfully obtain the information.


You can rely on trade secret principles to enforce rights on the invention. If the invention is put into commercial use, and maintained as a trade secret, . you must file a patent within one year of the date the invention was used commercially. If you wait over a year, an patent that you ultimately obtain will be held invalid if this fact was discovered and you will lose the trade secret protection because your invention will have been published during application process.


Advantages of Trade Secrets Vs. Patents


Trade Secrets Patents

Possibility of perpetual protection and will last indefinitely if not disclosed.

Limited statute of 20 years from filing and isn’t renewable.

Can be maintained without the cost or effort needed in patenting.

Needs cost & effort for patentability searching, drafting, and annual fees.

No need to disclose your invention to the public. You have to disclose your invention to the public.

You have definite, already existed rights and don’t have to worry about whether your patent application will be allowed.

You have to wait until the invention has a granted patent.

Not distributed to the public, so, no one can look and design around it.

Published to the public, so, anyone can design around the claims.

Can be established without naming any inventors. Names of inventors must be present on the patent application.

Doesn’t have to be a significant, important advance. Has to have a significant, important advance.

Can cover many information, including relatively minor details.

Each patent application only covers one broad principle and its ramifications.

Trade Secret rights are obtained immediately. Patent rights need a couple of years to be obtained.


Disadvantages of Trade Secrets compared to

Patents


Trade Secrets patents

Can’t be maintained when public is able to discover the information by Reverse Engineering.

Can be maintained even if the public can go through Reverse Engineering of your invention.

Strict precautions must always be taken and continually enforced to maintain the confidentiality.

No precautions are taken to maintain confidentiality when the patent is filed.

If a Trade Secret is discovered, it will be lost forever. A patent will not be lost before 20 years from the filing date, unless annual fees are not paid.

A trade secret is more difficult to sue on and enforce; it must be proven to exist before the suit may proceed.

A patent is easier to sue on and enforce; it must be initially presumed valid by the court.

A Trade Secret can be patented by someone else who discovers it by legitimate means.

A patent can’t be granted to anyone else.


• Note

Trade Secrets’ procedures don’t require any governmental or bureaucratic paperwork. The only necessary thing is that the inventor take reasonable precautions to keep the information confidential. Also, an employer has to have signed agreements with his employees regarding trade secrets and other employer rights.


End of Lecture


Documents

Commercialization of R&D Results: How to Prepare For The Early Stages