It is important to consider when an innovation is made how and when it should be protected before any details are published or any samples are circulated. Failure to do so can severely limit, or even wholly undermine, the scope for protecting the innovation either under patent law or as a trade secret under the law relating to confidential information. Where an innovation is not capable of being protected under the law of confidential information, a company with a new innovation may consider that it does not need protection by means of patents as it will be able to commercialise an innovation quicker and better than the competition. This is sometimes right, but in many cases it takes time for a new technology to take off, and the benefit of some protection from competitors at the outset is very worthwhile commercially. Some industries traditionally have taken little interest in obtaining patents and the first company to break that mould may be able to achieve considerable benefit.
Most practical innovations can be patented but patenting may not always be the best choice. Protection selection often lies between patenting and maintaining the innovation as a trade secret under the law of confidential information. There are a number of factors to consider. Not all innovations can be maintained as trade secrets. For example, a newly improved mouse-trap is unsuitable for protection under the law of confidential information because as soon as one mouse-trap is sold the innovative design will be published to the world. However, in some industries the use of trade secret protection is common. Fermentation technology, which is widely used to make certain drugs and which is very much a “black art” conducted in the privacy of the maker’s factory, is a good example of technology which may be better kept as a trade secret. Protecting innovation by means of patents is a more expensive route in the short term than seeking to protect it as a trade secret, but it may be the only way to protect many types of innovation. Although protection as a trade secret will be cheaper to start with (there are no formal applications to file, and no official fees to pay), it can be expensive subsequently to enforce such protection, even by comparison with the substantial costs of enforcing patents. Protection under the law of confidential information is relatively fragile when compared with patent protection, as it depends on stringent working practices, the honesty of the individuals involved and their respect for secrecy. It is generally advisable to have detailed confidentiality agreements with employees who will have access to trade secrets, and with third parties that from time to time have access to the employer’s premises, but such agreements rarely prove completely effective and trade secrets tend to leak out over time.While a patent provides more formal protection, the grant of a patent does not guarantee that the patent is valid, nor does it protect the inventor from, for example, regulatory constraints or the possibility that the operation of his invention may infringe another patent belonging to a third party.
If a rival decides to use the invention and infringe, the only way of enforcing the rights conferred by the patent is to commence legal action against the rival: the policing of a patent is the responsibility of the patentee, not the UK Patent Office (renamed the UK Intellectual Property Office (IPO) from 2 April 2007. If the rival does not settle quickly, patent litigation is often lengthy and expensive and is best avoided if possible.