Unitherm Food Systems, a food process machinery manufacturer, recently discovered that you cannot seek both patent and trade secret protection for the same innovation. Unitherm filed an action in 2014 against Hormel for disclosing Unitherm’s trade secrets to a competitor. Unitherm’s alleged trade secret focused on a method for pre-cooking sliced bacon.
In 2007, both companies executed a joint development agreement for developing an oven that would produce high levels of steam for cooking. Under the agreement, Hormel would own all intellectual property. In 2008 Unitherm filed a patent application covering the process of cooking food at high steam levels. Hormel withdrew from the agreement with Unitherm and filed for patent protection in 2010 on its own method of cooking bacon. Unitherm alleged that the method claimed by Hormel was that developed by Unitherm during the course of the joint development agreement and was proprietary.
The court threw out Unitherm’s claim for misappropriating its trade secret. The judge told Unitherm that they could not maintain a trade secret on something for which they were seeking patent protection.
Take away: you can’t claim something as a trade secret if you are going to try to obtain patent protection for the same innovation. Best practice: first figure out what is the best avenue for protection for your innovation (i.e. patent, design patent, trade secret, etc.). Then, try to obtain that protection for your innovation to the greatest extent allowed by law.
Protecting your innovative developments is critical to any organization. Having the right person to help you make that decision is important. The Law Office of Kathleen Lynch PLLC is designed to help businesses such as yours keep ahead of the game. The first telephone consultation is free. Email us at firstname.lastname@example.org.