When Not to File for Patent Protection


There may be times when deciding not to seek patent protection is appropriate, and will likely provide you with a stronger competitive advantage.  To help you decide whether seeking patent protection on your latest development is worthwhile, consider the following.

First, can your invention be easily reverse engineered?  If it cannot, then keeping your invention a  trade secret and refraining from filing a patent application may be appropriate.  When a patent application is filed, even if a patent is not ultimately granted, your application will usually be published 6 months from the date of filing of a utility application, unless you request otherwise, pay an extra fee and not seek protection outside the US.   To avoid wide dissemination of your invention, not filing for patent protection may be the better route.

Is your invention a method?  If it is, methods are more difficult to enforce when faced with possible patent infringement.  As the patentee of the method, you must show that the alleged infringer is practicing your methodology.  If this is not easily determined, enforcing your patent rights may prove challenging.

Could your invention be protected by trade secret?  Methods and other innovative developments may be just as easily protected by trade secret.  This first involves developing an organizational plan to protect trade secrets, educating everyone involved on all aspects of the plan (including contract workers and the like), and fully implementing the plan.  Elements of any plan to protect trade secrets would involve limiting access to areas where proprietary methods are practiced, and educating and reminding workers of their obligations of confidentiality.

Will the technology be around in 5 or 10 years?  If not, perhaps the investment is better spent in areas such as trade secret protection and marketing.  If you are the first one out there with a new and different methodology that will likely be replaced in a few years, your competitive advantage may be being the first to market, exploiting that opportunity fully, and moving forward with the next generational product or process.

Keep in mind, once a trade secret is out, it is lost forever.  If there was a breach of disclosure, there may be damages that could be obtained and possible injunctive relief obtained from the wrongfully disclosing party.  However, the secret cannot be retracted.  This aspect should also be considered in making that decision.