Trade Secrets Pre Patenting

by Dennis Crouch

Although trade secrets are independently important, they are play a key temporal role in the patenting process.  The touchstone of invention is when the inventors have a full mental conception of the invention, including how to make and use the invention. But, there is typically a months-long process of moving from conception to a filed patent application.  During that time the invention is typically kept secret in order to avoid losing patent rights due to early disclosure.  And, even after the patent application is filed, applicants often keep the invention secret for as long as possible in order to maintain a competitive advantage in the marketplace.  Thus, the first public knowledge of an invention is quite often at the publication date 18-months after filing.

General rights of privacy allow a person to keep secret information without  intrusion by the government or by wrongful acts by third parties.  Trade secrecy rights are an extension of these general privacy and began as common law. These rights were further developed and codified in the various states, especially with the Uniform Law (UTSA) movement that gained traction in the 1980s and 1990s.  In 2016, the U.S. Government enacted the Defend Trade Secrets Act (DTSA) that created a federal cause of action.   Although there are some differences between the various jurisdiction, all jurisdictions agree that trade secret rights originate in the holder of information, so long as:

1. the information is not generally known to the public;
2. the information confers economic benefit to its holder because the information is not publicly known; and
3. the information is subject to reasonable efforts to maintain its secrecy (by the holder).

Here is my question.  In the patent world, can we simply assume that innovation that that will become part of a patent application satisfies the economic benefit of secrecy requirement?  What is the best guide you have found for maintaining trade secret protections  for pre-patent innovations?

Conventional Wisdom: Keep inventions secret until the patent application is filed. Otherwise you may lose rights.

Is the fact that a patent application is being considered (or in progress) satisfy the “independent economic value” requirement for trade secret protection?

— Dennis Crouch (@patentlyo) July 26, 2021