When you have identified you have a valuable innovation that must be protected, is a trade secret or a patent the best option? These questions may be useful in your initial discussions:
HOW IMPORTANT IS THE LONGEBITY OF YOUR PROTECTION?
Patents have a limited duration (typically 20 years, although in some cases the patent term for a drug can be extended) while the term of protection provided by trade secrets can potentially be indefinite, as long as the secret remains a secret.
HOW QUICKLY DO YOU NEED YOUR PROTECTION?
Trade secrets can be protected immediately without the need for a lengthy and public patent application process. This means it can be useful when dealing with rapidly evolving areas.
IS IT POSSIBLE TO AVOID PUBLIC DISCLOSURE?
In many cases, when a product is put on sale, it is possible for the public to determine what goes into making it, and perhaps even the process used in its production. In the case of regulated products, such as medicines, there is a legal requirement to disclose the constituents. But not all products can be reverse engineered, and often there are aspects of product development and production that can be kept secret.
WOULD IT BE BEST TO AVOID PUBLIC DISCLOSURE?
Pursuing patent protection requires you to make a public (and detailed) disclosure of your invention. In contract, trade secrets by definition rely on you keeping all the salient information totally confidential.
HOW IMPORTANT IS TOTAL CONFIDENTIALITY?
Some life sciences companies prefer trade secrets for some facets of their business because secrets give you closer control over your innovations. With patents, the information is disclosed to the public, making it available to competitors. This means others can use what is released to potentially find ways to design around the scope of the patent, but trade secrets allow companies to control exactly who has access to their most valuable information.
ARE YOU PLANNING TO LICENSE YOUR INVENTION?
Trade secrets can give companies more flexibility when negotiating licensing arrangements by allowing them to choose exactly what is disclosed, to whom and under what terms.
HOW LIKELY IS IT THAT YOU'LL HAVE TO ENFORCE YOUR RIGHTS?
Enforcing trade secrets can be challenging. Enforcing patents can be more achievable but it is likely to be expensive. If you believe your rights will be challenged - and the level of risk if often high within the life sciences sector - you must be sure the cost and difficulty of enforcing your rights is justified by the commercial benefits.
WHAT IS YOUR BUDGET?
Obtaining and maintaining a patent can be expensive. Trade secrets are less expensive as there are no filing, prosecution, and renewal fees. However, given the life time value of a pharmaceutical patent and the commercial demand for establishing the strongest possible protection around your products, a decision should never be made on cost alone.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
