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    The Choice Between Patent Protection and Trade Secret Protection: A Legal and Business Decision

    By Professor Andrew Beckerman-Rodau
    Suffolk University Law School
    120 Tremont Street
    Boston, MA 02108
    E-Mail: arodau@suffolk.edu
    Web Page: www.lawprofessor.org

    Copyright 2002 by Andrew Beckerman-Rodau

    [Originally published in 84 J.P.T.O.S. 371 (2002)]




    Introduction

    Intellectual property (1) has always been utilized by enterprises. (2) However, modern businesses have substantially increased reliance on intellectual property. (3) To some extent this is a consequence of the explosion of technological innovation that has occurred over the past few decades. (4) Additionally, it is also attributable to the expansion of intellectual property protection. (5) For example, copyright protection was initially intended to protect printed matter. (6) Today, copyright protection extends to virtually any original work of authorship, (7) which can include, among other things, books, (8) software, (9) music, (10) pantomimes, (11) choreography, (12) motion pictures, (13) photographs, (14) maps, (15) three- dimensional objects (16) and buildings. (17) Trademark law traditionally covered words or logos used to create a mental association in the minds of consumers. (18) Modern trademarks can be virtually anything that creates such a mental association recognizable by consumers. (19) This can include slogans, (20) three-dimensional objects, (21) product packaging, (22) trade dress, (23) containers, (24) buildings, (25) sounds, (26) smells, (27) The overall color of a product (28) or an object that is a three-dimensional version of a trademark. (29) Patent law has been extended to computer software, (30) non-human life-forms, (31) methods of doing business (32) and new varieties of plants. (33) It has even been used to cover such mundane things as novel methods of lifting a box (34) and putting a golf ball. (35) Trade secret law traditionally protected secret processes used to manufacture products. (36) However, modern trade secret law provides protection for virtually anything maintained in secret by a business enterprise that gives it a competitive advantage in the marketplace. (37) This can include ideas, (38) manufacturing processes, (39) manufacturing drawings, (40) software, (41) customer lists, (42) marketing data (43) and pure information. (44)

    One consequence of the expanding domain of intellectual property protection has been the creation of increasing overlaps among the various bodies of intellectual property law. (45) A non-functional three-dimensional object is potentially protectible under copyright (46) and under trademark law. (47) Additionally, design patent protection (48) may also be applicable. (49) Software may be protected via copyright, patent and/or trade secret law. (50) Recently, the Supreme Court held that a sexually reproduced plant could be protectible under both the Plant Variety Protection Act and under utility patent law; (51) and an asexually reproduced plant could be protectible under the Plant Patent Act and utility patent law. (52) Likewise, new technological innovations may be protectible under trade secret law or patent law. However, unlike other areas of intellectual property law a new innovation, typically, must be protected either under patent or trade secret law, but not under both. (53)

    Patent and trade secret law can be viewed as alternative bodies of law for protecting certain types of inventions. (54) Consequently, an inventor will often have to make a choice or election between the type of protection to rely on. (55) This election must be based on considering both the legal consequences that flow from the choice and the relevant business considerations that must be factored into the choice. (56)

    Part I of this article will discuss the scope of patentable subject matter; Part II will discuss the scope of subject matter protectible via trade secret law. Part III will then address the legal and business considerations related to choosing between reliance on patent or trade secret law when the relevant subject matter is potentially protectible by either body of law.