Patents and trade secrets provide two ways of protecting inventions and technology other than a patent application. The AIA changed the playing field and disclosure requirements. Those who commercially use an invention one year before the patent was filed now have a defense to infringement claims.
Also, there is a federal cause of action for trade secret misappropriation under the Defend Trade Secrets Act (DTSA) that became effective on May 11, 2016.
Patent Attorney must understand the pros and cons of each mode of protection to guide their clients in choosing between protecting inventions as a trade secret, filing for a patent (patent application), or utilizing a strategy of both patent search, trade secret and patent application for an invention.
Steven M. Cohen, Senior Patent Attorney at Open Text; R. Mark Halligan at FisherBroyles and Pejman F. Sharifi, Partner at Winston & Strawn, will provide guidance for Patent Lawyers in determining whether trade secret or patent protection is the optimal mode for inventions and technologies. The panel will outline best practices for Patent Attorney to consider in determining the optimal form of protection.
The panel will review these and other key issues:
- What impact will the DTSA have on patents, patent applications?
- What impact is the AIA having on trade secrets?
- For what types of inventions is trade secret protection most suitable? Which inventions are more suitable for patent application?
- What factors should patent attorney consider when choosing between trade secrets and patents to protect IP?