Attorney In Colorado Discusses Patents vs Trade Secrets – Part 3 of 3

Attorney In Colorado Discusses Patents vs Trade Secrets – Part 3 of 3

Interviewer: And what about trade secret?

Patent Attorney: The article offers a strategy, where the applicant for a patent files a non-publication request so that the Patent Office does not publish the patent. As such, the information can be maintained as trade secret. If the patent does not issue, or the applicant wishes to maintain the information as trade secret, the patent application is abandoned and therefore never publicly disclosed. Or when the patent does issue, it is protected by the patent (albeit no longer a trade secret).

Interviewer: So you’re not required to publish your patent application.

Patent Attorney: Generally, the Patent Office will publish your patent application 18 months after the filing date. But for those first 18 months, the patent application is maintained in confidence and cannot be accessed by the public. In addition, an applicant can file a request for non-publication, in which case the Patent Office will not publish the patent application unless and until a patent is issued. But an applicant cannot file such a request if the patent application is being filed outside the United States. Then, the application must be published.

Interviewer: I see, that’s kind of confusing.

Patent Attorney: Yes, and the article correctly explains that these are very important business decisions that should be discussed with a qualified attorney to determine what is best given a particular situation.

Interviewer: Thank you, I think that’s all we have time for today. For more information, be sure to visit Trenner Law Firm’s website at www.us-patentattorney.com and Mark Trenner’s blog over at www.ipatentattorney.org

Attorney In Colorado Discusses Patents vs Trade Secrets – Part 2 of 3

Attorney In Colorado Discusses Patents vs Trade Secrets – Part 2 of 3

Interviewer: And what about patents?

Patent Attorney: Well patent protection is afforded by the government for inventions for a given time period – typically 14 years for design patents and 20 years from the filing date for utility patents. But this protection is granted in exchange for what is sometimes called a “limited monopoly.” That is, the patent owner has the exclusive right to make, use and sell the invention in the United States during the term of the patent. And in exchange, the government requires that the patentee disclose every aspect of the invention.

Interviewer: I see, so a patent is really the opposite of a trade secret.

Patent Attorney: In a way, because the inventor is required to disclose the invention in sufficient detail that someone having ordinary skill in the art can practice the invention.

Interviewer: Based on the difference between patents and trade secrets, the choice seems self-evident.

Patent Attorney: You mean that you can only apply for a patent for something you can’t trade secret – and you can only trade secret something that you can’t patent. Not necessarily.

Interviewer: I guess that’s why the article says “The Choice is not Always Simple” right?

Patent Attorney: The article supports what you just said – that in some cases that not every type of information can be protected by patent, or trade secret, or both. But as the article correctly explains, sometimes the information may be capable of being protected both by trade secret and patent, but not both at the same time.

Interviewer: How so?

Patent Attorney: The article explains that it may be wise to publish the relevant information. Publication should prevent others from applying for patent protection for the same invention.

For Part 3 of 3, Follow This Link: Attorney In Colorado Discusses Patents vs Trade Secrets – Part 3 of 3

Attorney In Colorado Discusses Patents vs Trade Secrets – Part 1 of 3

Attorney In Colorado Discusses Patents vs Trade Secrets – Part 1 of 3

Introduction: This morning we are interviewing Denver-area patent attorney Mark Trenner. Mark has been practicing as a patent attorney in Colorado for almost 14 years; the past 9 years at Trenner Law Firm. While his practice focuses primarily on helping small businesses protect their inventions with patents, Trenner Law Firm assists clients build out all aspects of their intellectual property portfolio, including copyrights, trademarks, and trade secrets.

Interviewer: The National Law Review recently published an article that appeared in the Orange County Business Journal titled “Trade Secret or Patent – The Choice is not Always Simple.” Please start by explaining the difference between a trade secret and a patent.

Patent Attorney: Sure, a trade secret is anything that can be maintained as a secret. If it can be reverse engineered, then it can’t be protected as a trade secret. So for example, a recipe might be protected as a trade secret. Think of the Bush’s Baked Beans commercial.

Interviewer: Where the dog wants to give away the family recipe.

Patent Attorney: Right, and the owner always stops the dog just in time. That’s because if the recipe were to be broadcast on national television, it would be considered to be in the public domain and no longer subject to trade secret protection.

For Part 2 of 3, Follow This Link: Attorney In Colorado Discusses Patents vs Trade Secrets – Part 2 of 3

China Patents Q & A – Part 4 of 4

Colorado Patent Attorney Mark Trenner answers questions regarding the Apple’s patent issues in China.

Watch 8 minute Video of Interview With Denver Patent Attorney Mark Trenner

Interviewer: What are some considerations a business owner should consider when seeking to protect their invention outside of the United States with patents?colorado patent attorney

Patent Attorney: Budget is always the biggest consideration. For individual inventors, start-ups, and small businesses, the money saved by not filing international patent applications may be better used to develop and market the invention in the United States. It is important to think seriously about the ability to effectively advance an invention outside of the United States, and the impact foreign filing will have on your budget.

Interviewer: Is there anything business owners should keep in mind if they are considering foreign protection for their inventions?

Patent Attorney: Most foreign countries have a strict standard – the invention cannot have been publicly disclosed to filing a patent application. There are exceptions, so be sure to discuss this with a patent attorney if you are interested in foreign filing.

Interviewer: Thank you, I think that’s all we have time for today. For more information, be sure to visit Trenner Law Firm’s website at www.us-patentattorney.com and Mark Trenner’s blog over at www.ipatentattorney.org

 

China Patents Q & A – Part 1 of 4

Colorado Patent Attorney Mark Trenner answers questions regarding the Apple’s patent issues in China.

Watch 8 minute Video of Interview With Denver Patent Attorney Mark Trenner

Introduction: We are here in Colorado to interview Denver-area patent attorney Mark Trenner. Mark has been practicing as a patent attorney for almost 14 years; the past 9 years at Trenner Law Firm. While his practice focuses primarily on helping small businesses protect their inventions with patents, Trenner Law Firm assists clients in building out all aspects of their intellectual property portfolio, including copyrights, trademarks, and trade secrets.colorado patent attorney

Interviewer: Wall Street Cheat Sheet published an article this month titled “Apple is Not Leaving Patent Matters to Chance Here.” This seems to be an article on patenting in China. What’s your take?

Patent Attorney: The article tells us that Apple was recently awarded 10 new patents in Hong Kong. It appears that these were all design patents. Businesses often overlook the value of design patents, and I’m happy to see that Apple takes design patents seriously.

Interviewer: What is a design patent?

Patent Attorney: In the United States, a design patent protects the unique ornamental appearance of a product, but not the function. Think of a lamp for example. The function of a lamp is to produce light, usually with an electric light bulb. The common electric light bulb that you can buy in your local hardware store can’t be patented. But if you have a unique design for the lamp – maybe the lamp base or the lamp shade – you may be able to apply for a design patent.

For Part 2, see China Patents Q & A – Part 2 of 4