Four options: Trade secrets, defensive disclosures, utility models, and patent applications with delayed examination
In intellectual property (IP), patents are often the go-to method for protecting inventions. However, they are not your only option. Alternatives such as trade secrets, defensive disclosures, and utility models can be more suitable depending on the nature of your invention and strategic goals. Also, consider a patent application with delayed examination.
Trade Secrets
Trade secrets cover any confidential business information that provides a competitive edge, but you must keep it a secret. This can include formulas, practices, processes, designs, instruments, or compilations of information.
Advantages:
- No Registration Required: Unlike patents, trade secrets do not require registration, which means there are no associated filing costs or lengthy examination processes.
- Unlimited Duration: As long as the information remains confidential, trade secrets can last indefinitely.
- Immediate Protection: Protection is immediate upon the establishment of confidentiality measures.
Disadvantages:
- Fragility: The protection is lost if a trade secret is independently discovered or leaked.
- No Exclusive Rights: Unlike patents, trade secrets do not grant exclusive rights, meaning others can legally reverse-engineer or independently develop the same invention.
- Expense: The cost of maintaining a trade secret is initially free but can climb $100,000s to millions per year as you retain employees to secure or compartmentalize the secret.
More information:
- Expense and complexity: As we have explained previously “Trade secrets are not cheap or easy”
- Patents are more robust: See “Patents are robust protection even when employees leave”
Defensive Disclosures
Defensive disclosures involve publicly disclosing an invention to prevent others from patenting the same idea. This creates references which can be used to prevent others from patenting the same or related ideas or invalidate subsequent patents.
Advantages:
- Cost-Effective: Publishing a defensive disclosure can be free or low cost.
- Prevents Patents by Others: By creating prior art, it prevents others from obtaining patents on the disclosed invention.
- Immediate Effect: The protection is immediate upon publication.
Disadvantages:
- No Exclusive Rights: Defensive disclosures do not provide exclusive rights to the inventor, meaning anyone can use the disclosed invention.
- Public Disclosure: The invention must be fully disclosed to the public, which may not be desirable for all inventors.
- No presumption of enablement: When an examiner cites a patent application or patent it is assumed to be an enabled disclosure. For this reason, examiners heavily favour patent references. Your defensive disclosure may be overlooked.
Examples:
- Publishing a technical paper on a preprint service like arXiv, or blog post detailing an invention.
- Submitting a disclosure to platforms like the Technical Disclosure Commons (TDCommons).
Utility Models
Utility models, also known as “petty patents” or “innovation patents” are a form of IP protection for inventions that may not meet the stringent requirements of a full patent. They are typically used for incremental improvements or manufactures.
Advantages:
- Lower Threshold for Inventiveness: Utility models have less stringent requirements compared to patents, making them easier to obtain.
- Faster and Cheaper: The application process is generally quicker and less expensive than for patents.
Disadvantages:
- Limited Scope: Utility models offer less protection than patents and are not available in all countries.
- Shorter Duration: The protection period is shorter at 7 – 10 years compared to patents, which can last up to 20 years.
- Limited availability: Only certain countries offer a utility model, and none accept an application in English. See patent offices of Germany, Austria, Czech Republic, Finland, France, Hungary, Italy, Poland, Portugal, Slovakia, China, Japan, South Korea, and Taiwan.
Discussion of the alternatives to patents
We suggest avoiding trade secrets unless the IP right clearly suits your invention and industry. Defensive disclosures are a lot of work and give uncertain rewards. Indeed the best-known examples ended long ago. IBM’s Technical Disclosure Bulletin ran from 1958 to 1998. The USPTO had a Statutory Invention Registration that ended in 2013. We like utility models but not the translation costs.
What to do? It depends. Do consider the options above. Also, consider filing a patent application in Canada which publishes 18 months from filing. You get all the advantages of a technical disclosure plus the option to seek an assertable right in the 9th largest economy. You can file for as little as C$234.90 (small entity in 2025) and have two (2) years before any fees are due. Then you can do nothing and get a defensive disclosure, or you can prosecute the application.
Contact us to take action
The principals at Perpetual Motion Patents have extensive experience as in-house IP managers and IP strategists. If you would like help crafting an IP strategy that includes alternatives to patents please do contact us.
