To patent or keep secret: top tips from Gowling WLG's global IP professionals

5 minute read
18 May 2020

Amid the frenetic pace of today's innovation lifecycle, do patents always afford the best protection of proprietary inventions? Or, with increasingly strong trade secret laws around the world, should innovators instead consider keeping their smart ideas under wraps indefinitely?  

On May 13, 2020, members of Gowling WLG's global intellectual property team presented a live webinar that unpacked how IP owners can approach these questions strategically. The webinar, the first in our Lifecycle of a Smart Idea series is now available.

With a view to further helping you determine whether the patent or trade secret route is most conducive to your business objectives, below our webinar speakers have compiled their "top tips":

Huw Evans, Partner, London: "Be brave. Remember laws and situations change over time. Don't just assume you can't get a valid right or protection. The UK offers a very flexible enforcement platform and the Courts are very much aware that businesses need effective and common sense enforcement measures."

Evgeniya Gizatullina, Patent Attorney, Moscow: "I would recommend patenting your smart idea, if possible, and using alternative IP protection such as copyright and designs, where patenting is not possible."

Ivy Liang, Director, Guangzhou: "Nowadays, courts in China are more willing to apply punitive damages in intellectual property cases, if some criteria are met. Furthermore, the discretionary amount of compensation has also increased dramatically. These will greatly help rights holders to protect their rights and interests."

Thomas Mayer, Partner, Munich: "Something to keep in mind is that patent infringement courts in Germany are considerably patentee-friendly. As regards trade secrets, we have a new law in Germany that entitles the owner of a trade secret to claims for injunction, destruction, restitution, recall, removal and return, as well as to claims for information and damages in the case of a violation of the trade secrets, i.e. the full tool box. These aspects are linked, as it is planned to incorporate provisions on the protection of trade secrets into the German Patent Code so that they can also be applied in patent infringement proceedings".

Michael Crichton, Leader of IP Litigation & Strategy Group, Canada: "The single tip I would give an inventor is to consider not just what is involved in the acquisition and maintenance of the IP right, but also how they'll have to enforce it. While it might initially seem easier to just keep something a secret and not bother with the costs of patenting, the reality of trade secret enforcement is that it is more complex and more time consuming than patent enforcement. With patents, you have a clear delineation of your legal rights in the claims. This, combined with some basic information on a defendant's accused product and a robust discovery process like we have in Canada, allows for a more timely and predictable litigation experience with a variety of effective remedies available to a successful plaintiff.

"Trade secrets on the other hand can be difficult to define precisely, which makes enforcement actions sometimes a moving target. This, combined with often not knowing precisely what an ex-employee is or is not using at a competitor, and with trade secret remedies being more limited in cases where any springboard advantage has run out by the time any trial occurs, makes trade secret cases oftentimes more challenging and less justifiable."

Gordon Harris, "A patent is a commercial asset, not a vanity project. The decision to seek patent protection is a business decision, based on all the usual business criteria - cost, risk, opportunity, and options. When considering applying for a patent, ask the question "why" and undertake a proper due diligence process."

Learn more about our Lifecycle of a Smart Idea series and access all webinar recordings. The series offers a fresh look at the field of intellectual property by tracing the options and steps that occur over the lifetime of a "smart idea" – from the laboratory or the "eureka moment," to the full development and exploitation and beyond. Over the course of the series we will be exploring the full range of IP rights, all while giving you the tips and perspectives you need to maximize opportunity and minimize risk when taking your smart idea to the global market.

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