Howard & Howard
Mr. Engel concentrates his practice in intellectual property law with a focus on obtaining and enforcing patents and trademarks, with a particular emphasis on patent preparation, prosecution and opinion work. He also counsels clients on intellectual property portfolio management and development, both domestically and internationally. Mr. Engel represents a wide array of clients from start-ups to multinational corporations in the automotive, building, chemical, medical, software, and manufacturing industries. Prior to his legal career, Mr. Engel gained over 10 years of experience in R&D and manufacturing in the automotive and specialty chemical industries.
The Never-Ending Struggle – Do I Disclose My Formulation and Attempt to Obtain a Patent or Maintain the Formulation as a Trade Secret?
Companies are often forced to internally debate whether to apply for a patent or keep the invention “secret.” This question is particularly ripe in the field of coatings, where the formulations are cumbersome, if not impossible, to reverse engineer. Thus, the consequences of the public disclosure mandated during the patenting process can be especially harsh if an attempt to obtain a patent is ultimately unsuccessful. This presentation will explore the essential factors that should be balanced when debating whether to apply for a patent or maintain a trade secret. This presentation will also discuss relatively new procedures at the United States Patent and Trademark Office that, if leveraged correctly, will allow an applicant to gather critical information and make an informed decision.