Lawyer Monthly Magazine - October 2019 Edition

Patent Rights Reserving Patent Rights For Your Secret Processes? Most businessmen, and frankly many IP attorneys, believe that trade secret and patent rights are mutually exclusive. It is commonly believed that if you choose to keep innovations a secret, then you cannot attempt to patent them. If you attempt to patent them, you obviously cannot keep them secret, because they will be published about 18 months after the earliest claimed priority date. In addition, many non-US based companies believe that a prior user right will enable them to claim a defense if threatened with a lawsuit from a US patent holder. To most persons reading this article, it will come as a surprise that the above assumptions are simply not true insofar as the US is concerned. Not mutually exclusive The fact that trade secret rights and patent rights are mutually exclusive is indeed the case in Europe (including Switzerland), China, Japan, South Korea, India, Russia, and essentially every industrialized country of the world. This means that if you choosetoprotectyour invention with a patent application, you subject yourself to publication of that patent application at 18 months after the earliest claimed priority date or the date of filing of the application, whichever date is earlier. Publication destroys trade secret rights in the published information. Once the previously secret information is published, one can no longer rely on trade secret protection. Consequently, it is clear to essentially all IP professionals that the choice to file a patent application comes with an obligation to give up any trade secret rights in the content of this patent application at least after a period of time when it is too late to prevent publication at 18 months. There are, however, two significant exceptions that apply to the US. First, the filing of a US provisional patent application does not constitute acceptance of publication at 18 months because US provisional patent applications are never published until they are claimed in a regular patent application . Therefore, if you file and pay the fees for a US provisional patent application, and do nothing further, the US provisional patent application will not publish and so, unless you or someone else publishes previously secret information about your invention, or unless you fail to make a reasonable effort to keep it secret, your invention will indeed remain secret and so you may preserve your trade secret rights in this information. Second, if a regular US application is filed together with a non-publication request, then, provided that the invention disclosed in an application has not been and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires publication of applications eighteen months after filing, the application will not be published, assuming formalities are met. Further, grant of a US patent 74 WWW.LAWYER-MONTHLY.COM | OCT 2019 First Choice Lawyers By John Moetteli, Esq., J.D., US, Swiss and European IP Attorney CONTACT John Brent Moetteli, Doctor of Jurisprudence, Da Vinci Partners LLC Address: Rathausgasse 1, 9320 Arbon Switzerland Offering & services for our clients active in China; offering DAVINCI ® services for the Da Vincis of the world. ™