LES Webinar: Combining Trade Secret and Patent Protection in an Integrated IP Strategy

Please join the Silicon Valley chapter for a “fireside chat” style conversation between two veteran Silicon Valley IP colleagues discussing “Combining Trade Secret and Patent Protection in an Integrated IP Strategy.”

Historically, at least in the US, these two forms of protection were, and to a lesser extent still are, viewed by many IP professionals as inconsistent and incompatible because patent law requires public disclosure (via publication) of the “best mode” of implementing a particular inventive concept, which would seem to preclude any further protection for the disclosed material under trade secret law. 

Conversation topics will include:
• Does one really need to make an “election,” at some point, between patent and trade secret protection, i.e., are they alternative or complementary forms of protection?
• The current status of the “best mode” requirement under US patent law.
• Other relevant disclosure requirements under Section 112 of U.S. patent law: Enablement, Written Description, Claim Definiteness, etc.
• Does intentional omission of implementation-level details that would be “obvious” to a person of ordinary skill in the relevant art violate best mode?
• International implications: Does integration travel well?
• Converting tacit knowledge (human capital) to explicit (and legally protectible) know- how (a form of intellectual capital)
• Documenting trade secrets for M&A, licensing and other forms of tech-transfer, as well as future litigation for misappropriation
• Reverse engineering issues

There will be ample opportunity for attendee comments and questions following the chat.

Speakers:
James Pooley, Trade Secrets Litigator, Advisor and Expert
Ron Laurie, Managing Director, Inflexion Point Strategy, Chair, LES Silicon Valley Chapter

Nonmembers: $69