Patents and Trade Secrets: When to Disclose Your Invention and When to Keep Your Invention Secret

If you have an invention that you’re interested in protecting, you may have heard that you should be careful who you tell about it.  This is good advice, but how do you know who to tell and when?  What consequences are there for disclosing an invention under U.S. law, and what recourse is there if someone steals your invention?  

At War IP Law PLLC, we have experience navigating these questions and can provide you with specific advice on how to best protect your most valuable assets.  In this article, we’d like to provide a generalized overview of how U.S. law with respect to patents and trade secrets and disclosure and secrecy.

Trade Secrets vs Patents

First, there are disclosure differences between trade secrets and patents.  They both provide protection of your invention or valuable information, but in opposite ways.  For example, to protect your invention or valuable information under trade secret law, you must take specific steps to keep the information related to your trade secret, secret.  Under 18 USCS § 1839, a trade secret can be any form or type of financial, business, scientific, technical, economic, or engineering information.  This includes patterns, plans, compilations, program devices, formulas, designs, prototypes, methods, techniques, processes, procedures, programs, or codes, whether tangible or intangible.  However, they must be stored, compiled, or recorded physically, electronically, graphically, photographically, or in writing.

Trade Secret Law

In order to obtain trade secret protection, the information to be protected must have some economic value, and you must take reasonable measures to keep the information secret.  If you’re not sure what the courts consider reasonable measures, our experienced team of War IP Law attorneys can advise you and tailor a strategy that will best suit your business needs.  Although consultations with an attorney can sometimes be quite expensive, we at War IP Law PLLC typically offer an up to 30-minute free discovery call that you can take advantage of right now.

Notably, trade secret protection only allows you to sue an infringer if they learned the secret through improper means, such as stealing your information.  If a competitor reverse engineers your invention, you may lose protection entirely.  Furthermore, many inventions are simply difficult or impossible to keep secret.  For these inventions, protection under the U.S. patent laws may be preferable.

Patent Law

Unlike trade secret law, which grants you protection through secrecy, patent law grants you twenty years of exclusive rights in exchange for public disclosure of the invention.  Specifically, a valid patent must disclose the invention in sufficient detail so that a person of ordinary skill in the relevant art can practice your invention, once any resulting patent has expired, without undue experimentation.  This disclosure must be done by formally applying with the USPTO (United States Patent and Trademark Office).  But what if you’ve already told someone about your invention?  Can you still apply for a patent?  Typically, if your invention was disclosed publicly and you’d like to protect your invention in the United States, the USPTO allows you a one year grace period to file a patent application after public disclosure.  Once the one year grace period after public disclosure expires, the public disclosure will prevent you from being granted a patent.  If you’re not sure what counts as public disclosure, contact War IP Law PLLC today for more information.

Provisional Patent Applications

For many inventors, public disclosure is necessary, or desirable, to obtain funding or gauge consumer interest.  For these cases, the USPTO allows inventors the opportunity to file a provisional patent application which provides you with one year to disclose your invention to others and still be able to claim priority to your provisional application so long as the corresponding utility patent application is filed within a year of the filing date of the provisional application and the subsequent application claims priority to the provisional application.  Provisional patent applications still require disclosure to the USPTO but are far less strict and typically have less expensive filing fees.  Keep in mind that your provisional patent application will not be examined, and you cannot be granted a patent until you file a subsequent utility or design patent application.  Also, only the information disclosed in the provisional patent application is entitled to the date of the filing of the provisional patent application.  

Attorney Client Privilege

One important thing to remember about the one-year grace period is that contacting an attorney typically does not start the clock.  This is because disclosing your invention to an attorney is normally considered a private disclosure so long as attorney client privilege applies.  Information told in confidence to an attorney is protected by attorney client privilege as long as an attorney client relationship is formed and sometimes, in instances in which you reasonably believe that that the attorney-client relationship has been formed.  You may be surprised to learn that this does not require the attorney to be hired, only that the attorney is acting in his/her professional capacity.  For example, if you take advantage of War IP Law PLLC’s up to 30-minute free discovery call, all information disclosed during the discovery call should be covered by attorney client privilege and will not start the one-year clock.

Contact Us

If you have any questions about how the above information applies to your invention, don’t hesitate to contact us.  At War IP Law PLLC, our legal team offers a wide range of legal services to companies, individuals, and inventors related to intellectual property, including trademarks, patents, copyrights and trade secrets, as well as litigation involving the infringement of any of these intellectual property rights. Our goal is to help clients identify, register, and assert their IP rights while defending those that are accused of infringing the intellectual property rights of others. If you would like further information about merely descriptive rejections or want to explore your legal options in such situations, contact War IP Law PLLC. You can call us at 202-952-4004 to speak with a member of our legal team.