June 27, 2023

Protecting Your Software: Navigating Patents and Trade Secrets

Whether a startup or a Fortune 500 company, the first order of business should be to protect the intellectual property of the business. In essence, intellectual property is anything that is an original thought or creation. Although there are numerous ways to go about protecting intellectual property, a more common dilemma is whether to file a patent for the idea or invention or rely on trade secret laws for protection 

The main difference between a patent and a trade secret is that a patent is a publicly issued document and a trade secret is exactly that, a secret. Let us look first at the requirements for obtaining a patent.  

There are three general requirements for patentability:  

1) The invention must be unique/novel. This means the invention must be something that has not been previously known or used. To meet the novelty requirement, no prior invention can disclose all the features of the invention seeking a patent.  

2) The invention cannot be an obvious variation of what is already out on the market. Generally, this means the invention could not have been obvious to a person with ordinary skill in the relevant field at the time of its creation.  

3) The invention must enable an abstract idea. While this is true, the creation must be more than just an abstract idea or concept. It must be a practical application of that idea or concept, that is, a concrete implementation that can be put into practice. For example, in technology, the invention must demonstrate it is a technical solution to a technical problem, like software that enhances the functionality of a device. Without detailed specifications and instructions enabling a person skilled in the relevant field to make and use the invention, it is not likely the idea will meet this requirement.  

The patent system requires that an invention be both novel and useful, that it not be an abstract idea, but rather, a practical and feasible implementation that enables abstract ideas. Patents encourage innovation and contribute to the advancement of science and technology. If you think you have an invention that should be patented, contact us today to develop an IP protection plan. 

While patents generally address scientific and technological advancements, trade secrets are confidential and proprietary information that provide a competitive advantage to a company-information that is not known to the public. Trade secrets can include formulas, manufacturing processes, customer lists, product designs, and marketing strategies, amongst other information. With trade secrets, we are dealing with information critical to a company’s success. Trade secrets are protected under various laws and, often, through confidentiality agreements to prevent unauthorized use or disclosure by employees or competitors.  

Under trade secret law, there are three general requirements:  

1) The idea you are seeking to protect must have been kept a secret. 

2) The idea must not be easily ascertainable or generally available.  

3) The idea must have independent economic value.  

If your idea or information qualifies as a trade secret, legal protection lasts to the extent that the information is never voluntarily disclosed.  

Deciding between patents and trade secrets can be a challenging task for businesses and innovators. It is important to understand the advantages and disadvantages of each option to make the right decision. At Kelley Kronenberg, we understand that every business has unique needs when it comes to protecting intellectual property. We offer expert guidance and support to help you make the right decision between patents and trade secrets. Whether you need the strong legal protection of a patent or more flexibility in your IP strategy, we can help you navigate the complexities of patent and trade secret law.  

Do not leave the fate of your valuable intellectual property to chance. Contact us to schedule a consultation and start protecting your assets today.  

Timothy D. Shields
Partner, Data Privacy and Technology
Kelley Kronenberg-Fort Lauderdale, FL.
(954) 370-9970