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.


  1. Impact of the DTSA on patents
  2. Impact of the AIA on trade secrets
  3. Inventions/technologies suitable for trade secret protection
  4. Benefits and risks of patent and trade secret protection
  5. Best practices
    1. Choosing between patent and trade secret protection
    2. 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
Open Text, Boston

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
FisherBroyles, Chicago

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, New York

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

Includes recorded streaming video of full program plus PDF handouts.

On-demand is the only recorded format recognized for CLE credits in DE, IN, KS, LA, MS, NC, OH, OK, SC, TN, VA, WI.

AK, AZ, CA, CO, CT, DE, FL, GA, HI, IA, ID, IL, IN*, KS, KY, LA, ME, MN, MO, MT, NC, ND, NH**, NJ, NM, NV, NY, OH*, OK, OR, PA, SC, TN, TX, UT, VA, VT, WA, WI, WV, WY (Note: Some states restrict CLE eligibility based on the age of a program. Refer to our state CLE Map for additional information.)

*Only available for attorneys admitted for more than two years. For OH CLE credits, only programs recorded within the current calendar year are eligible - contact the CLE department for verification.

**NH attendees must self-determine if a program is eligible for credit and self-report their attendance.

CLE On-Demand Video $297.00

How does this work?

Recorded Event

Includes full event recording plus handouts.

Strafford is an approved provider and self-study CLE credit is available in most states.

AK, AZ, CA, CO, CT, FL, GA, HI, IA, ID, IL, KY, ME, MN, MO, MT, ND, NJ, NM, NY, OR, PA, TN, TX, UT, VT, WA, WV, WY (Note: Some states restrict CLE eligibility based on the age of a program. Refer to our state CLE Map for additional information.)

Strafford will process CLE credit for one person on each recording.

Additional copies of a recording can be purchased at a discount. Please call Strafford Customer Service toll-free at 1-800-926-7926 ext 10 or email to place your order.

Recorded Webinar Download $297.00

How does this work?

Recorded Audio Download (MP3) $297.00

How does this work?

DVD (Slide Presentation with Audio) $297.00 plus $9.45 S&H

How does this work?


Strafford webinars offer several options for participation: online viewing of speaker-controlled PowerPoint presentations with audio via computer speakers or via phone; or audio only via telephone (download speaker handouts prior to the program).  Please note that our webinars do not feature videos of the presenters.

Program Materials

Requires Adobe Reader 8 or later. Download Acrobat FREE.

Program Materials

Requires Adobe Reader 8 or later. Download Acrobat FREE.

or call 1-800-926-7926

CLE Credits

Many states grant CLE credits for on-demand streaming audio programs and recorded events. Our programs are pre-approved in many states. Refer to our state CLE map for state-specific information.

or call 1-800-926-7926

Customer Reviews

I liked the practical insights, particularly when tied to cases the presenters had worked on.

Michael Gray


Strafford provided an enthusiastic presentation that focused on patent practice, not theory.

David H. Vance

Vance Intellectual Property

Strafford webinars are timely, offer practical advice, and are very well prepared.

David J. Wier

Harter Secrest & Emery

The handouts were very good with helpful cites.

Richard Macias

Creim Macias Koenig & Frey

Convenient, interesting and informative. Strafford brought together good subject matter experts with practical knowledge.

Thom Cope

Udall Law Firm

or call 1-800-926-7926

Patent Law Advisory Board

Charles S. Baker


Locke Lord

David S. Bloch


Winston & Strawn

Irah H. Donner



Ian N. Feinberg


Feinberg Day Alberti & Thompson

Anthony J. Fitzpatrick


Duane Morris

David Segal

Senior IP Counsel


Astrid R. Spain


Jones Day

Mark P. Wine



or call 1-800-926-7926

Our Guarantee

Strafford webinars are backed by our 100% Unconditional Money-Back Guarantee: if you are not satisfied with any of our products, simply let us know and get a full refund. For more information regarding complaints and refunds, please contact us at 1-800-926-7926 ext 10. Complaints regarding this program can be submitted via the course evaluation found in the “Thank you” e-mail at the end of the course.