Choosing between a patent and a trade secret can be an agonizing decision, particularly in the coatings industry. Often, confirming that the right decision was made is only realized years after the decision, with the benefit of hindsight. The intention of this article is not to persuade a decision maker to file a patent application or to maintain a trade secret. Instead, this article provides a brief overview of patents, trade secrets, and an in-depth discussion of infrequently used procedural options available at the United States Patent and Trademark Office (USPTO) that can be leveraged to gather critical information and thereby enable a decision maker to confidently elect to either apply for a patent or maintain a trade secret.
Most coatings formulators understand that obtaining a patent on a coating formulation is a valuable asset. This is because patents provide the ability to exclude competitors from making, using, offering for sale, selling and importing the claimed formulation. However, the decision to apply for a patent may not be an easy one – as the outcome is not guaranteed. For example, for fiscal year 2019, the USPTO allowed 74% of patent applications. In addition, of the allowed patent applications, the claims of the vast majority of these applications were narrowed during the prosecution before the USPTO. In other words, at the conclusion of the application process before the USPTO, 26% of applicants are left empty handed, and the vast majority of remaining applicants obtained less than what they originally asked for.