The scores allocated to each factor will be weighted,
depending upon the overall strategy of the business and
the competitive environment in which it operates. As an
example, for an innovation in a high-tech business such as
semiconductors, factors 1-4, 8 and 12 might be relevant,
in that high-scoring answers to those questions (i.e. likely
high returns on the innovation + the innovation is a key
innovation + it’s easy to discover/reverse-engineer + it is of
long-term relevance + competitors are likely to be working
on similar technologies + there are no other ways of
achieving the effects of the innovation) will probably point
towards a decision to patent the innovation.
A different answer to one or more of questions 1-4, 8 and
12 might point to a different outcome. For example, if the
innovation is difficult to discover or reverse-engineer (i.e.
low scoring answer to question 3), and/or if it is unlikely
that competitors are working on similar technologies (low
scoring answer to question 8), then the aggregate score
of the relevant factors might point to maintaining the
innovation as a trade secret, particularly if the innovation
can be kept secret (high scoring answer to question 14).
In some situations other factors may be more relevant.
For example, if freedom to operate (i.e. the ability to
use the innovation without fear of patent infringement)
is important (high scoring answer to question 9)
and competitors are likely to be working on similar
technologies (high scoring answer to question 8) and
the innovation cannot be kept secret (low scoring
answer to question 14) then the aggregate score of the
relevant factors might instead suggest publication of
the innovation, to prevent competitors from obtaining a
patent for it.
There is of course no one-size fits all solution to the
question of whether to patent, publish or maintain an
innovation as a trade secret. However, an approach of
the kind discussed here, if applied uniformly to all new
innovations, can help to ensure that valuable intellectual
property is identified, captured and protected in the
most appropriate way, to support the overall commercial
strategy and objectives of the business.
To find out more
contact Matthew Howell
1. What are the likely commercial
returns on the innovation?
2. Is the innovation key to implementation
of current/future products?
3. Can it be discovered/reverse-
engineered by competitors?
4. Is it of long-term relevance?
5. Would it be easy to detect in
competitor products?
6. Is it applicable more widely than in
own products (i.e. is there a licensing
opportunity)?
7. Is it relevant to a standard?
8. Are competitors working on similar
technologies?
9. Is freedom to operate important?
10. Is it in a new field of technology?
11. Is it a breakthrough technology or
an incremental improvement?
12. Are there other ways of achieving
the same effects (could a patent be
worked around easily)?
13. Are there other reasons to patent
(e.g. patent box)?
14. Can it be kept secret?
10
The table below gives some examples of factors that might be considered in determining whether to patent,
publish or keep an innovation secret.
...Patent, publish or trade secret
IP review
autumn
2016
