There are opportune times to “harvest” — meaning, identify and inventory — trade secrets. If a company recognizes and takes advantage of those opportunities, then developing a robust trade secret portfolio should become considerably more manageable.
For example, suppose that a company develops a product. Consistent with company policy and practice, the employees who developed the product prepare an innovation disclosure form and submit that form to in-house intellectual property (IP) counsel. After assessing the disclosure, the company decides to seek patent protection for the product.
The company’s decision to seek patent protection is not the end of the IP calculus for that product; indeed, it is just the beginning. For example, the company soon will be presented with two important opportunities to harvest trade secrets relating to the product.
First, while the patent application is being prepared, developments that are complementary to the claimed invention — but that do not need to be and, ultimately, are not included in the patent application — should be identified. Those developments, which may relate to manufacturing the product, are potential trade secrets. A potential trade secret’s viability as an actual trade secret (e.g., can it be reverse engineered?) should be evaluated as part of the company’s innovation disclosure policy and practice. If the potential trade secret is viable, then next steps can include properly identifying, inventorying and protecting that asset.
Second, after the patent application is filed, additional steps may be taken to commercialize (e.g., manufacture, market and sell) the product. Those steps may include refining the manufacturing process, developing quality control specifications, establishing commercial terms with suppliers and developing marketing and sales strategies. Such refinements, specifications, terms and strategies are potential trade secrets. Of course, some of those innovations also may be patentable. As noted above, if a potential trade secret ultimately is not the subject of or included in a patent application, including any continuation or continuation-in-part application, then the potential trade secret should be evaluated as part of the company’s innovation disclosure policy and practice. If the potential trade secret is viable, then, again, appropriate next steps (noted above) can be taken.
In sum, an IP asset typically is not a stand-alone asset. In other words, various forms of IP are inherently complementary, and an appreciation for the connectivity between patents and trade secrets should lead to smoother development of a robust trade secret portfolio.