This document discusses the differences between trade secret protection and patent protection for intellectual property. Trade secrets do not require formal registration and protect confidential information, but lose protection if disclosed. Patents require public disclosure of secrets in exchange for a legal monopoly but last 20 years. The document outlines key considerations for determining whether trade secret or patent protection is best and consequences of disclosure, including potential claims and effects on protection. It also discusses compatibility of the two forms of protection and provides examples.

1. TRADE SECRETS AND PATENTS:
THE YIN AND YANG OF IP LAW
BY:
KIRBY DRAKE

2. Trade Secrets v. Patents
• Trade secret protection
extends to confidential
information that gives a
company a competitive edge.
• Patent protection requires
public disclosure of the secret
in exchange for a monopoly
over its use.

3. Trade Secrets v. Patents
• Trade secrets do not require formal registration.
• 6-part balancing test
• Inventors must apply for a patent with U.S. Patent
and Trademark Office.

4. Trade Secrets v. Patents
• Trade secrets must be kept confidential.
• Disclosure may destroy protection.
• Patent subject matter must be disclosed.
• Failure to disclose may invalidate patent

5. Trade Secrets v. Patents
• Trade secrets usually endure as long as the
information is kept secret.
• Patent protection generally extends for 20 years
from the date of filing.

6. Best Mode
Filing Patent
Application
Maintaining Trade
Secret

7. Best Mode
• Is the trade secret part of
subject matter related to best
mode?
• Was the trade secret part of
best mode known at time of
patent filing?
• Was best mode known for
practicing invention disclosed
at time of patent filing?

8. Effects of Trade Secret Disclosure
• Claim for Trade Secret Misappropriation
• Preliminary Injunction
• Reassignment of Patent
• Destruction of Trade Secret Protection

9. Remedies
• Federal law preempts state law in patent
enforcement.
• State law governs, trade secret enforcement,
but disputes may be litigated in either state of
feral court.

10. Remedies
• Trade Secrets
• Injunctive relief
• Monetary damages
(royalty)
• Attorneys’ fees
• Punitive damages
• Patents
• Injunctive relief
• Monetary damages
(royalty)
• Attorneys’ fees
• Treble damages

11. Compatibility of Trade Secrets/Patents
• Coca-Cola
• Industrial diamond process technology of
General Electric Corporation (GE)
• Wyeth v. Natural Biologics
• C&F Packing v. IBP and Pizza Hut

12. A Balancing Act
PatentTrade
Secret