Advantages*

Trade Secret

Utility Patent

Gives competitive advantage

Yes

Yes

Long term protection

As long as secret can be kept

~17 years from patent issue (or 20 years from filing date**)

Relatively low cost to protect

Yes or No--Depends on the number of people who know the secret and how hard it is to protect

Yes or No--

Patent application must be prepared and filed and maintenance fees paid.  Have right to exclusivity but must defend patent rights

Rights can happen fast

Yes, as soon as information has value and is kept reasonably secret it can be offensively protected

No, average time for patent application to issue in 2009 was 34.6 months

Good for business information such as customer lists and information, names of suppliers, pricing data, formulas or recipes

Yes, almost every business has these

No, except for method patents

Product/process involved can be minimally novel

Yes

No, must meet patent standards

Good for product/process that becomes obsolete fast

Yes

No

Good for product/process that can be reversed engineered easily and legally

No

Yes

Good for product/process that is easily discoverable

No

No, must be non-obvious

Good for an invention that was not patented because lesser or different than patentable matter

Yes

No, must meet patent standards

Good for product/process that is disclosed in literature

Yes, if competitive gain possible

No, not novel

Good for customer information such as customer list

Yes, if information not generally known

No

Good for information on costs and pricing, sources of supply, mailing lists, methods of finding new opportunities

Yes, as long as information is not generally known

Yes if method of making list is patentable

Good for complicated product/process where experience is essential and new technologies are expensive to adopt

Yes, lack of experience can act as a barrier to learning the secret. New processes can be too expensive for competitors to try to duplicate without certain knowledge of the secret and success.

No, the patent must be completely disclosed.

May be sold or licensed

Yes

Yes

Can be legally protected by contract

Yes

No, must be publicly disclosed BUT can be protected by trade secret during patent prosecution until publication

Can protect product/process that fails patenting process

Yes, if publication has not occurred, applications are kept secret by patent office until publication

No, the patent must issue for legal protection

Good for inventions

Yes if information not generally known and can be kept secret

Yes if novel, non-obvious and appropriate subject matter

Good for designs

No

Yes

Good for ideas themselves

Yes

No, must be fully defined

Protects improvements on a product/process

Yes, may be used to protect newly discovered ‘best modes’ ( or ‘worst modes’) of patented processes if they are not easily discoverable

Only if new patent application is filed

Good to protect knowledge of person of ordinary skill in the trade

No, ordinary knowledge is not protected

No, must be novel, non-obvious to person of ordinary skill in the art

Good for protecting product/process that multiple people have discovered

Yes, uniqueness is not necessary but cannot be widely known. But cannot prevent someone else from using the product/process if obtained in legal manner such as independent discovery.

Yes, if you are the first. No, if you are second or later unless have additional matter to make patentable over the first.


Good for venture-capital investments


No


Yes, investors may prefer patents in high-technology industries

*Note: These comparisons are generalizations and for illustrative purposes only.


** A patent cannot be enforced before it issues except for some minimal provisional rights after publishing.

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How To Show Acquired Distinctiveness Under 2(f)

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What is the Difference between Principal & Supplemental Register? What If Someone Files An Opposition Against My Trademark?

Patent steps

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ID of Goods and Services see also Headings (list) of International Trademark Classes

Broad Patents

Geographically Descriptive or Deceptive

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TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Examples Office Action Responses More Examples

Trademark Incontestability  TTAB Manual (TBMP)

Trade Secrets

What are Dead or Abandoned Trademarks? Can I Use An Abandoned Trademark?  Can I Abandon a Trademark During An Opposition?

State & Federal Trade Secret Laws

Differences between TEAS and TEAS plus  Zombie Trademark

Chart of Patent vs. Trade Secret

What Does Published for Opposition Mean?

How to Keep A Trade Secret

Acquired Distinctiveness  2(f) or 2(f) in part Extension of Time to Oppose

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