1. Patents and trade secrets are not mutually exclusive; they are complementary.
2. If you don’t have any way to detect infringement of a patent, you should consider keeping your invention secret and not patent it.
3. One way to protect trade secrets is to “split up” the information among employees so very few individuals have the complete picture. This might be hard to implement as a practical matter.
4. Failed mergers and acquisitions present significant risk of trade secret misappropriation.
5. Be careful not to disclose trade secrets to third parties without a non-disclosure agreement or without marking it “confidential” or “trade secret.”
6. In due diligence, be sure to keep careful track of confidential information and trade secrets that are disclosed so you can get them back if the deal fails.
7. If you were the suitor in a proposed acquisition, you need to be sure any new developments after the acquisition fails are not tainted by confidential information or trade secrets disclosed by the target.
8. When trade secrets are kept in a repository it is best to track access to that repository.
9. Recent decisions concerning patent eligible subject matter could lead to greater use of trade secret protection in lieu of patent protection
10. If the invention can be reverse engineered, trade secret protection is not a viable alternative to patent protection.
Benjamin Fink is known for his work in noncompete, trade secret and competition-related disputes. A shareholder at Berman Fink Van Horn, Ben concentrates his practice in business and employment litigation.
