Management | So, Should We Patent That?

Published: February 12, 2013, By Kelly Robinson

Your team has been working hard to solve an important production problem. Finally, a technical breakthrough means that the problem can be solved. The customer is going to be happy. At the wrap-up meeting, someone asks, “So, should we patent that?” What are your options? How will you decide? This article reviews the advantages and rationales for four options:

• File a patent application.
• Maintain the invention as a trade secret.
• Disclose the invention.
• Do nothing and get on with your other high priority work.

Introduction

My father grew up in the 1930s on a farm in Kansas. While he always dreamed of having his own farm someday, he had no desire to depend on the land for income. He wanted a “gentleman farm” where he could enjoy having a barn, a tractor, and a few cows. After he retired from the Air Force, he was looking to purchase some land in central Indiana where he was to join the faculty at Purdue University.

I was a just a kid riding in the back of the car when the real estate agent pulled over, looked across a large plot of land and said, “Isn’t that the most beautiful thing you’ve ever seen?” While my Dad nodded in agreement, all I could see was a lot of mud where manure had just been spread. When I complained about the odor, my dad said gently, “Son, that is the smell of money being made.”

In my youth, I was blind to what these two old farmers saw. That plot of land was among the most fertile on earth. That property represented income and, in good years, even prosperity for the owners.

Property is like that. It can be bought and sold. It can produce income and prosperity for owners and employees. In the converting business, property is land, buildings, raw materials that we purchase, finished products that we sell, and the incredible machines that we use to convert the raw materials into high-value products.

Ideas also can be property…“intellectual property.” The concept for a new product, the process needed to manufacture a product, the modifications to existing machines that improve reliability and reduce waste, and even the know-how to run machines safely and efficiently are all ideas that can be keys to success. We work hard to commercialize new ideas and to gain an edge in the marketplace with innovative manufacturing advances and novel business methods. When managing intellectual property, we need to understand our options and think through the implications of our decisions on whether to file a patent application, maintain an advance as a trade secret, disclose an invention, or simply do nothing.

The IP Axis

Consider both uniqueness and detectability when deciding on an intellectual property path (see Figure 1). The uniqueness axis extends from “Many possible alternatives” on the low end to “Only one alternative” on the high end. When working on something new, are there many possible alternatives? Is the decision a matter of picking a good alternative among many based on economics and the specific circumstances? If so, the new idea is low on the uniqueness scale…just one of many possible alternatives. Or has the work consumed money and time just to find one thing that works? If so, the new idea is high on the uniqueness scale…there just are no other ways to get the job done.

 

The detectability axis extends from “hard to see,” such as the temperature set-points for a dryer, to “easy to see,” such as the number of layers in a laminated web. A good way to think about detectability is to imagine that you are standing outside your competitor’s facility. You would like to know what is going on inside. How easily could you find out? Could you just purchase a sample product and examine it to learn what you need to know? Or, would you have to be invited inside (unlikely!) to inspect their machine?

1. File a patent

A patent is a contract between an inventor and the US government under which the government grants the inventor a limited monopoly. The limited monopoly gives the inventor the right to exclude others from making, using, or selling a claimed invention in the US for 20 years from the filing date. In return for these patent rights, the inventor discloses the complete invention to the public to promote the progress of science ^[1].

Patents are provided for in article 1, section 8, clause 8, of the US Constitution, which states: The Congress shall have power...[t]o promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive rights to their respective writings and discoveries. The US Dept. of Commerce administers the patent process through the US Patent and Trademark Office (USPTO).

Title 35 of the United States Code (governing law) section 101 reads: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

Table I summarizes patentable subject matter. The term “manufacture” refers to an “article of manufacture” or, in general, pretty much anything made by humans including, for example, genetically engineer bacteria.

TABLE I. Patentable Subject Matter

1. Process (series of steps)
2. Machine (assembly of parts)
3. (an article of) Manufacture
4. Composition of Matter

A patent is an “offensive” right in the sense that the holder of a patent has the right to exclude others (sue for patent infringement). If someone is infringing your patent, you can enforce your patent rights. This is why detectability is an issue. If you don’t know that someone is infringing your patent, you are unable to enforce your rights.

2. Maintain a trade secret

Any confidential business information, which provides an enterprise a competitive edge, may be considered a trade secret ^[2]. Protecting your invention as a trade secret may be a good option when it is high on the “uniqueness” scale and low on the detectability scale, or “hard to see.” Suppose that you were to patent this invention. You would likely be granted the patent because you are the inventor, the idea is new, useful, and fits into one of the four broad categories of patentable material. However, how would you exercise your patent rights? How would you learn that a competitor is using your idea? After all, the idea is “hard to see.”

So maintaining an idea as a trade secret may be a good option. Is it sufficient for your team to simply declare that the breakthrough idea is now a trade secret? More needs to be done. This option requires effort, expense, and diligence. Imagine that you discover that a competitor has somehow obtained your trade secret and that they are now using your idea. You think that they must have stolen your trade secret. So, you sue the competitor to prevent them from profiting from your idea.

You will need to go to court and argue that your idea really was maintained as a trade secret. I can almost hear an opposing lawyer argue, “No, no, no. This idea was certainly not stolen. It is just the result of good engineering practice that any competent technical employee would develop given the circumstances.” So you must be able to argue that the idea is unique, special, and protected. Your information must be sufficiently detailed to show that the idea came from your efforts and not simply as the result of good engineering practice elsewhere. Table II summarizes some of the layers of security commonly used to protect trade secrets.

Table II. Layers of Security Protect Trade Secrets

DOCUMENT

1. Document trade secrets in internal reports.

2. Maintain a list of trade secret technologies.

3. Label documents as "confidential."

4. Keep confidential documents in locked file cabinets or in encrypted files.

LIMIT ACCESS

5. Limit access to facilities (fence, secure doors, etc.)

6. Limit access to trade secret technology on a "need to know" basis.

ADMINISTRATIVE ACTIONS

7. Require all employees to keep confidential information secret (employee agreement).

8. Require business partners and consultants to sign non-disclosure agreements.

 

3. Disclose the invention

To understand disclosure, imagine the following situation. A few years ago, your team helped solve an important manufacturing problem and now most of the lines are using the solution. While there are several good alternatives, this one works well for your operations. Now, one of your competitors has been granted a patent on the very same thing. They must have been dealing with the same issue, independently arrived at the same solution, and decided to pursue a patent.

As your competitor now owns this intellectual property, you are now required to modify all of the manufacturing machines to avoid losing a lawsuit. For example, I imagine that your maintenance manager would be furious when instructed to use his meager budget to undo work that has just been completed and install a different technology that might not work as well. This would be an expensive distraction. How can you avoid this situation?

Disclosure is a defensive strategy that prevents a competitor from obtaining a patent on your invention. Disclosure acts as a barrier or “statutory bar” to obtaining a patent. Title 35 of the United States Code (governing law) section 102(a) reads: A person shall be entitled to a patent unless – (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent.

In this context, “known” means accessible to the public. So, with a printed disclosure of your idea, you can invoke 102(a) to bar future patents on the portion of your idea that is described. Of course, you don’t need to disclose all details. In fact, you should disclose only enough information to block a future patent.

For example, in the course of technology development projects, I have often designed-experiment to include several “baseline” runs using known materials and process set-points. Baseline runs test or validate the experiment to make sure we get the known result with “baseline” conditions. With just a little creativity, a couple experimental runs can be added for a “prove the principle” without using the best materials or processes. These “proof of principle” results can often be disclosed as a technical publication without revealing the really “good stuff.”

I strongly recommend making disclosures that are easy to find (see Table III). Making disclosures can contribute to your company’s reputation and support marketing. While the “Hard to Find” disclosures are legal and provide protection, they complicate the job of patent practitioners who work diligently to write valid patents. Knowing about conflicting publications early in the patenting process is much preferred to having a disclosure “pop-up” late in the game.

Table III. Disclosures
Easy to Find	Hard to Find
Conference presentations Published technical articles Trade publications ResearchDisclosure.com	Obscure Website postings Written reports distributed only at a conference Academic report available only in a university library University- or company-sponsored research disclosure journals

 

4. Do nothing

Often, a technical advancement is the product of “good, solid engineering.” If the invention is just one of many good choices, then the right to exclude others from practicing or profiting from the invention is of little value. Others can just pick another alternative that is almost as good as the one you chose. In this case, the “Do Nothing” option is appropriate.

Conclusion

Four intellectual property options are:

1) Filing a patent application is appropriate for unique and detectable inventions.

2) Maintain an invention as a trade secret when the idea is unique and undetectable.

3) Disclose an invention to maintain your ability to practice your invention. Of course, you don’t need to disclose everything.

4) When an invention is just one of many good alternatives, do nothing and get on with your other high-priority work.

References

1. Hildreth, R.B., “1:2 Definition of a Patent,” Patent Law, A Practitioner’s Guide, 3rd ed., USBN: 978-0-87224-113-8, Practising Law Institute, New York, 2011, pg. 1-1 – 1-2.

2. World Intellectual Property Organization (WIPO), www.wipo.int/sme/en/ip_business/trade_secrets/trade_secrets.htm

 

About the Author

Dr. Kelly Robinson, president of Electrostatic Answers, has 27+ years of experience in problem-solving and consulting. He is the author of PFFC's Static Beat column and Kelly on Static blog. Contact him at 585-425-8158; This email address is being protected from spambots. You need JavaScript enabled to view it.; www.electrostaticanswers.com.

 

Editor's Note

This article is reprinted with permission of AIMCAL. It won the 2012 John Matteucci Technical Excellence Award for Web Coating at AIMCAL's Web Coating & Handling Conference, which was held October 21-26, 2012, in Myrtle Beach, SC.