New patent filings are a key component of intellectual property strategy, but strategy encompasses much more than just filings. Three important aspects of IP strategy we address are: (1) choosing between patents and trade secrets for new inventions; (2) identifying trade secrets that are ancillary to patents; and (3) assessing strengths, weaknesses, and gaps in existing IP portfolios.
For any invention, an important first question is whether to protect it as a trade secret or to file a patent application, and we can help in making that decision. While a strong patent protects the monopoly rights of the owner for 20 years, trade secret protection can theoretically protect an idea for much longer.
We recommend patent filing for products and services that are publicly visible, easily reverse engineered, or likely to be independently developed by others. There are also other considerations we address under specific circumstances, such as inventions involving AI. We have extensive experience with AI, including expertise on the growing use of AI in the inventive process.
While the question of patents and trade secrets is typically expressed as “either/or,” we consider doing both for each invention. For example, with an invention that uses machine learning, we recommend keeping your valuable training data as well as the trained model as trade secrets. It is a separate question whether to protect any associated algorithms, techniques, or user interfaces with patents or trade secrets. In addition, inventions typically have several ancillary trade secrets that we can help identify. For example, a patent claim may specify a range of values for a parameter, and optimal values for that parameter may be kept as a trade secret. We can help you with both primary inventions and associated trade secrets.
We can also assist when you need to take a broad view of an IP portfolio. This can be particularly useful over time as corporate priorities evolve. In this case, instead of evaluating an individual patent, we can review an entire portfolio or a designated subset to:
- determine how well the portfolio aligns with current corporate objectives;
- assess the quality of the patent assets that are most relevant to the business;
- identify potential continuation patents targeted to specific competitors;
- identify gaps in the portfolio; and
- identify patents or patent applications that could be pruned to reduce costs.