Trade Secret or Patent: Take Your Pick

On July 24, 2013, in Patents, Trade Secrets, by Brian A. Hall

UnIntellectual Property (UnIP): Trade Secret for Website Concept Identified in a Patent

The United States District Court of the Northern District of California has held that the disclosure of concepts in a patent application that were alleged to be a trade secrets extinguishes any trade secret claim.  Defendant claimed that its concept related to a business venture, “which was to be an online private social network for neighborhood inventors by geocoding of inventors and owners from public patent and trademark data in a specific neighborhood,” was a trade secret and countersued Plaintiff for trade secret misappropriation in a lawsuit involving multiple other claims.  The Court recognized that, under California law, when alleged trade secret  information is disclosed in patents or patent applications, it passes into the public domain and can not be protected as a trade secret any longer.  In analyzing the issue, the Court recognized that the patent’s title, “Map Based Neighborhood Search and Community Contribution,” diagrams, explanations, and inclusion of at least one reference similar to the underlying website justified that the concept, claimed by Defendant/Counter-Plaintiff as a trade secret, was disclosed in the patent.

The conversation with clients as to whether to protect a particular kind of intellectual property with a trade secret or patent arises regularly.  In the case of software applications, sometimes copyright protection even enters the discussion.  Nonetheless, this case illustrates the trade off and confirms that such intellectual property owners must pick between trade secret and patent protection.  For additional information about the benefits and disadvantages of both, see articles from WIPO and Yale.

Nextdoor.Com, Inc. v. Raj Abhyanker, 2013 WL 3802526 (N.D. Cal. July 19, 2013.



Leave a Reply

Your email address will not be published.