Protection strategy: register your intellectual property rights or keep the secret?

Some entities choose to protect their intellectual property by secrecy and not by an intellectual property right such as a patent. This strategy must be carefully considered and here are a few keys to help you make the right decision.

ADVANTAGES AND DISADVANTAGES OF A PATENT AND OF A BUSINESS SECRET

A patent is a very effective protection since it confers a monopoly of exploitation for 20 years on its owner. Its acquisition cost varies on average between 3,500 and 5,000 Euros, without taking into account the reductions granted by the National Institute of Industrial Property (INPI) to SMEs in particular as well as the annual royalties.

However, the patent implies the publication of a very precise description of the invention, accessible to competitors and thanks to which they can develop comparable inventions. In addition, after filing a patent, one must remain extremely vigilant and perform a technological watch on new patent applications.

The secret, meanwhile, makes it possible to stay ahead of competitors and not to provide them with years of research and significant investments on the invention. In addition, if it is well managed, the secret can last more than 20 years.

It is extremely fragile; however, and once the secret is disclosed, the competitive advantage is lost, and protection can no longer be invoked. In addition, if a competitor files a patent for the same invention, even much later, you will need to prove your previous personal possession of it to continue using it without being qualified as an infringer.

HOW TO CHOOSE BETWEEN PATENT AND SECRET?

It all depends on the type of property you intend to protect. For Jacques Bauvir, head of the Intellectual Property Department of the Michelin Group, the basic principle is to “patent everything that is visible and keep secret what can be kept secret”.

In other words, since competitors can easily decipher our invention by dissecting it and analyzing its components, it is better to protect it with a patent.

On the contrary, if years of research do not allow them to understand and imitate our invention, then keeping its manufacturing process and its materials secret will be a more adequate protection.

HOW DO YOU EFFECTIVELY KEEP THE SECRET?

To be kept, the secret first requires that employees and other persons involved are trained and made aware of the importance of confidentiality in the protection of the invention.

In addition, you must implement strict protection measures, which are tangible (locked cabinets, locked workstations, product tests in a secure place inaccessible to third parties, etc.) or contractual (confidentiality clause), and enforce them.

Finally, care must be taken to ensure that confidential information meets the criteria of business secrecy: the protection of the Directive will then be applicable, in particular its extremely dissuasive sanctions. This ensures that a competitor does not promise an employee or another person a large sum in exchange for a disclosure (as long this person has been trained to know the risk it is exposed by disclosing a business secret …). This could be classified as unfair competition but remains difficult to prove.

ALATIS advises you on the adequate protection for your intellectual assets: contact us contact@alatis.eu

See also: What is business secrecy?