.
Trade Secrets.
.
.
Fortress PATENTS / IP is available to guide securing proprietary knowledge and skill into guarded competitive advantage as trade secrets.
.
Trade secrets are a fourth, but less formal statutory recognized class of intellectual property, but can be one of the most important.
.
When protecting a formula, pattern, machine, process, or other patent eligible intellectual property, there is the decision whether to protect by patent or protect by trade secret.
.
.
.
Trade Secret Highlights
Trade Secrets have the following general character:
  • Does not expire, if secrecy maintained.
  • May cover broader subjects than those permitted by a patent.
  • Does not protect against independent discovery and use.
  • Now may be converted to a patent, within limits.
  • Some trade secret protections are required as a member of the World Trade Organization.
  • Trade secret protections are provided by the states, not the U.S. Government.
  • The only protection is from unauthorized disclosure, called a misappropriation.

.

.
To Disclose Or To Keep Secret
.
Patents
Must Teach Invention – Patents require the inventor to provide a detailed and enabling disclosure about the invention in exchange for the right to exclude others from practicing the invention for a limited period of time. 
Eventually Expires – Patents do expire, and when that happens the information contained within it will no longer be protected. However, unlike trade secrets, patents protect against independent discovery. Patent protection also eliminates the need to maintain secrecy.
.
Trade Secrets
Never Expires – A trade secret never expires and can be a competitive advantage for product and market generations.
Broader Coverage – A trade secret is not limited in its coverage, where a patent broadly protects, but does have some limitations.
Actively Keep Secret – It is not enough to just hope proprietary information will not be found out, but active steps must be taken to retain proprietary information secret. As such, to qualify as a trade secret does not come without cost and effort.
Some Misappropriate Protection – The risk of retaining information as a trade secret is there is little recourse for protection if the trade secret is lost by unauthorized disclosure, theft, or use. There is some recourse in the courts, but it is outside of U.S. Patent Law and requires evidence of reasonable measures taken to retain as a trade secret.
Independent Discovery – A patent will protect for its period of granted rights against use by independent discovery, but a trade secret will be lost if independently discovered, engineered around, or derived. 
.
Trade Secrets
.
.
.
Three Trade Secret Definitions
.
1.  The USPTO – A trade secret must not be known outside a business or its licensees, must be used in business, and give an opportunity to obtain an economic advantage over competitors who do not know or use it.
.
2.  The Trade Related Aspects of Intellectual-Property Rights (TRIPS) Agreement (Article 39) – Indicates three factors are common in defining a trade secret:
  • Is not generally known to the public,
  • Confers some sort of economic benefit on its holder (where this benefit must derive specifically from its not being publicly known, not just from the value of the information itself), and
  • Is the subject of reasonable efforts to maintain its secrecy.
3.  Department Of Justice 18 U.S.C. § 1839(3) (A), (B) (1996), – Trade Secrets:
  • All forms and kinds of Information, but not publicly known,
  • Reasonable measures taken to protect the information among a minimal number of people,
  • Which derives independent economic value from not being publicly known” and not readily ascertainable, and
  • Have some “minimally novel” character.
“Minimal Novelty” – Unlike patents, which must be both novel and non-obvious, as well as a step beyond “prior art,” trade secrets must be only “minimally novel.” Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 476 (1974). In other words, a trade secret must contain some element that is not known and sets it apart from what is generally known. According to the legislative history of the EEA, “[w]hile we do not strictly impose a novelty or inventiveness requirement in order for material to be considered a trade secret, looking at the novelty or uniqueness of a piece of information or knowledge should inform courts in determining whether something is a matter of general knowledge, skill or experience.” 142 Cong. Rec. S12201, S12212 (daily ed. Oct. 2, 1996).
.
.
Fortress PATENTS And IP is available to provide assessment and consultative services to heighten trade secret security and management with a broader intellectual property strategy.
.