ABSTRACT
When in doubt about whether a new development constitutes new IP and what type of IP protection is needed, the safest bet in the beginning is to keep all valuable information secret and ensure that every person who gets involved signs a confidentiality agreement. Keep in mind that a single non-confidential disclosure will destroy the trade secret status and can also preclude the ability to obtain a valid patent in much of the world. Now that you have a secret, should you just keep it secret? Is that sufficient, and is it the right protection? Relying only on protection of information as a trade secret (which is often not properly protected) can be risky. In most situations where the information is also potentially protectable by a patent, a safer and more robust approach is that the trade secret status be treated only as a temporary measure until patent protection can be secured. Indeed, just because only Joe and Prakash have keys to an office where there is a computer storing data on a new nanotech fabric that is considered a trade secret and these are the only people, besides of course the CEO Mark, who know a password for the computer, it does not mean that everybody can relax and decide to defer instituting more serious IP protection measures to sometime in the future. What happens if Joe and Mark have a disagreement and Joe leaves to work for a competitor? Alternatively, what happens if Mark, in a conversation with an outside consultant, unintentionally or not, discloses the secret information? Or what if Joe discusses, in confidence, the new nanotech fabric with his wife and she happens to, in even greater confidence, discuss it with her best friend who just cannot bear to keep such exciting news to herself and posts it on social media that same night while having a glass of a good red wine? Such hypotheticals are endless but the outcome is the same. The genie is out of the bottle and the trade secret is no more. The ability to patent may be lost as well. True trade secret protection is notoriously difficult to maintain over time, particularly in the fast-moving, loosely structured, collaborative world of early stage technology companies.
