Trade Secrets and Patents: A Comprehensive Approach to Protecting Intellectual Property
Evaluating the Protection Options, Weighing the Benefits and Risks
Recording of a 90-minute CLE webinar with Q&A
Conducted on Thursday, February 16, 2017
Recorded event now available
This CLE webinar will provide guidance for IP counsel in determining whether trade secret or patent protection is the optimal mode for inventions and technologies. The panel will outline best practices for counsel to consider in determining the optimal form of protection.
Patents and trade secrets provide two ways of protecting inventions and technology. The AIA changed the playing field and disclosure requirements. Those who commercially use an invention one year before the patent was filed now have a defense to infringement claims.
Also, there is a federal cause of action for trade secret misappropriation under the Defend Trade Secrets Act (DTSA) that became effective on May 11, 2016.
Counsel must understand the pros and cons of each mode of protection to guide their clients in choosing between protecting inventions as a trade secret, filing for a patent, or utilizing a strategy of both trade secret and patent protection for an invention.
Listen as our authoritative panel examines the choice between seeking patent or trade secret protection. The panel will discuss options in planning for protecting new inventions and technologies, considerations when determining which protection to seek, and opportunities for coexistence between patents and trade secrets invention. The panel will offer best practices for determining which form of protection works best.
- Impact of the DTSA on patents
- Impact of the AIA on trade secrets
- Inventions/technologies suitable for trade secret protection
- Benefits and risks of patent and trade secret protection
- Best practices
- Choosing between patent and trade secret protection
- Implications of the choice
The panel will review these and other key issues:
- What impact will the DTSA have on patents?
- What impact is the AIA having on trade secrets?
- For what types of inventions is trade secret protection most suitable? Which inventions are more suitable for patents?
- What factors should counsel consider when choosing between trade secrets and patents to protect IP?
Steven M. Cohen, Senior Intellectual Property Counsel
Mr. Cohen concentrates his practice on patent prosecution and litigation, IP transactional work, copyright and trademark protection, open source licensing, IP due diligence for acquisitions, trade secret practice, and more. He is currently responsible for developing, managing, protecting and enforcing the IP rights and assets of his corporate client. Mr. Cohen advises and educates clients on facets of IP law, strategy, and asset development and utilization.
R. Mark Halligan
Mr. Halligan focuses his practice on IP litigation and complex commercial litigation. He has successfully represented both individuals and corporations as plaintiffs and defendants in federal and state courts throughout the U.S. In recent years, Mr. Halligan has been at the forefront of international developments in IP law and is a recognized thought leader in the ever-growing area of trade secrets law, having spoken worldwide to organizations and corporations on the topic.
Pejman F. Sharifi, Partner
Winston & Strawn,
Mr. Sharifi concentrates his practice in transactional, counseling, litigation, and licensing matters. He prepares and prosecutes patent applications, represents clients in patent infringement suits, manages IP assets, provides invalidity and non-infringement opinions, counsels with respect to strategy; and evaluates IP assets in the context of litigation, mergers, acquisitions, and investments.
CLE On-Demand - Streaming Video
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I liked the practical insights, particularly when tied to cases the presenters had worked on.
Strafford provided an enthusiastic presentation that focused on patent practice, not theory.
David H. Vance
Vance Intellectual Property
Each speaker's topic was distinct. The written materials were also excellent and contained useful information and tips.
Very good. Gave me exactly what I wanted. The questions I emailed in were handled thoroughly.
James J. Long
Briggs & Morgan
The speakers were very knowledgeable and I liked that everyone spoke their minds.
Patent Law Advisory Board
Fulbright & Jaworski
Winston & Strawn
Stroock & Stroock & Lavan
Feinberg Day Alberti & Thompson
Senior IP Counsel
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