Patent Disclosure Requirements and Trade Secret Protection

Patent Disclosure Requirements and Trade Secret Protection 

Issuance of a patent obviates the legal necessity for keeping the information contained in the patent application secret. The Patent Act requires the patentee to make the knowledge behind the invention publicly available. Under 112 of the Act, a patent applicant must include in the patent application a written description of the patent that is clear, concise, full and exact enough to enable someone skilled in the most relevant art to make and use the invention without undue experimentation. The patent application must also set forth the best mode for carrying out the invention that the inventor contemplates at 

Pending issuance of the patent, an applicant may maintain the information in the application as a trade secret. Until the patent issues, the Patent and Trademark Office keeps all information about the patent application secret. 35 U.S.C. 122. Applications are not available to the public or to other inventors. However, once the patent issues, the application and supporting documents, as well as Patent and Trademark Office action on the application, are filed in the Patent and Trademark Office search room. Such disclosure ends trade secret protection over the disclosed information. 

In some situations, companies may be reluctant to distribute products without a patent. For example, a company may own a new chemical compound that is useful in its own industrial processes, which it would sell for use by the general public if it could retain its proprietary right in the chemical. However, if the chemical is readily analyzable, distribution would destroy the company s trade secret rights. Lack of a patent therefore is impeding sale of the product. The Patent and Trademark Office rules provide that, where lack of a patent is preventing distribution of a product, a patent applicant may apply to have its application made special and expedited. 

The best mode provision of Section 112 may require the patentee to reveal information which it otherwise would hold as a trade secret. Patent protection only extends to the invention set forth in the patent claims. 35 U.S.C. 112, 154. The best mode of using the invention may itself not be patentable, but may be useful commercial information which would be protectable under state trade secret law if kept secret. However, courts often hold patents invalid for failure to disclose the best mode that was being considered for use whether or not the mode had been finally developed at the time the patent application was filed. Patentees may keep secret new modes of use for the invention that they first contemplate after the patent application is filed, even though those new modes may be superior to the best mode contemplated at the time of filing. 

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