At a conference I attended recently, a session followed up on an idea that has been proffered in response to recent Supreme Court decisions that have appeared to stifle gene-related patents: that companies look into the possibility of trade secret protection for their inventions rather than patents.  

Kevin Noonan of McDonnell Boehnen Hulbert & Berghoff, Chicago said during a 2010 webinar I covered, “It may come down to the question, to patent or not to patent. In some instances, patenting may not be an option, and when you can't patent, seeking trade secret protection for the discovery becomes an attractive alternative.”  

And so at the BIO IP Counsels Committee Conference Nov. 14 in Charleston, S.C., attorney panelists experienced in trade secrets discussed “The Trade Secret Minefield.” They noted that a trade secret is information that derives economic value by virtue of its secret status and the reasonable, although not necessarily perfect, steps that have been taken to keep it secret.  

Among the differences between trade secrets and patents, the panelists said, are that patents are federal law questions and trade secrets are generally state law questions; patent damages are usually better defined than those for trade secrets; patents must be useful, novel, and disclosed, while trade secrets must be secret and commercially valuable;  the protection period for a patent is 20 years, while trade secrets are protected forever unless they are disclosed or lose value; and for patents, there are registration and maintenance fees and the cost of the time to obtain a patent, while trade secrets are technically free but have the hidden cost of keeping the information secret.  

The nature of the invention and the differences between patents and trade secrets will affect the company's choice.