Protecting Innovation: A Practical Guide for Patents and Trade Secrets  

Written By Haley Etcheson

As a patent attorney, one of my primary goals is to help my clients navigate the complex but rewarding terrain of intellectual property (IP) protection. This post summarizes the key takeaways from a recent presentation I delivered to a client on patents and trade secrets— with practical advice tailored to support that client’s business strategy. 

Why Should You Consider Patenting? 
Patents are not just legal documents; they are valuable business tools that can: 
- Safeguard your R&D investments 
- Preserve your freedom to operate 
- Defend your market share from competitors 
- Generate licensing income 
- Enhance your company’s valuation 

Put simply, a well-considered patent portfolio adds both offensive and defensive value to your business. For many clients, patents are also key assets in funding rounds, M&A, or when positioning themselves as industry leaders. 

Patent Basics: What Qualifies for Protection? 
You don’t need to invent the next rocket engine to secure a patent. A successful application requires that your invention be (i) new, (ii) nonobvious, and (iii) useful. Even modest advancements — like improved breathable footwear — have qualified for patent protection. 

There are two main types of patents: utility patents, which protect how something works, and design patents, which protect how something looks. Both can be incredibly valuable. Take, for example, Apple’s successful enforcement of its “slide-to-unlock” design — a key factor in a $120 million verdict against Samsung. 

The Patent Process: What to Expect 
Here’s how we typically help clients navigate the patenting process: 
1. Invention Disclosure: We begin with a detailed description of the invention, often using a custom form to capture technical and strategic information.  This is normally provided by the inventor, but an MLO patent professional sometimes prepares this for the client. 
2. Strategic Review: With management, we assess whether to move forward after considering factors such as: 
   - Is the invention aligned with your product roadmap? 
   - Would competitors find it valuable? 
   - Does it give you a competitive edge? 
   - Can infringement be monitored and enforced? 
   - Is patent protection feasible given the prior art? 
   - Would secrecy serve you better? 
3. Patentability Search: We perform a focused review of existing technologies to assess your invention’s uniqueness and likelihood of success in the patent office. 
4. Filing Strategy: We review the patentability results, and depending on your business goals, we may file a provisional, non-provisional (utility), Track One (fast track), or design patent.  Management may also decide to not file for a patent. 
5. Patent Application Review: We request an inventor review to confirm technical accuracy of the patent application contents, and then we handle the submission of the application to the U.S. Patent and Trademark Office (USPTO). 

When a Trade Secret Is the Better Option 
Not every innovation should be patented. If reverse engineering is unlikely and secrecy is sustainable, trade secret protection might be the better route. 

Keep Your Invention Confidential 
- Limit internal access and clearly mark documents as confidential until a patent application is filed. 
- Avoid any external disclosure before a patent filing (if one is planned). 
- Use NDAs with vendors, suppliers, and collaborators — ideally before any discussions begin.  Best practice is to have both a patent application filed and an NDA in place before sharing inventions with third parties. 
- Follow U.S. export control laws when sharing confidential data abroad. 

Freedom to Operate: Avoiding Third-Party Patent Risks 
If you become aware of a third-party patent: 
- Do not email about it — talk to legal counsel directly 
- We’ll help determine whether your product may infringe any claims 
- We evaluate the enforceability and validity of the third-party patent 
- Design-arounds or licenses may be options — or a formal Freedom to Operate opinion may be appropriate 

Patent Searching and Communication Policies 
To protect you from increased liability, 
- Do not conduct your own patent searches unless management has approved it after discussing the risks with a patent attorney 
- Do not speculate (even internally) on whether someone else’s patent is valid or infringed 
- Do not research your competitors' patents 

Why this matters: courts can penalize companies for willful infringement if there's evidence of reckless disregard for third-party patents. 

This does not apply to competitor product information and technical articles such as white papers.  The willful infringement risk is only associated with third-party patents. 

Final Thoughts: Collaborating on IP Strategy 
Whether you’re a startup or a mature enterprise, a proactive IP strategy is a competitive differentiator. If you're planning new product development, entering new markets, or even brainstorming what’s next — now is the time to engage. 

MLO is here to help you think strategically, avoid pitfalls, and capture the value your team is working hard to create. 

Haley Etcheson
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