To patent or not to patent, that is the right question.
Don’t get us at Tangibly started on “patent vs. trade secret” or “patent or trade secret”. There’s no reason why a creative IP advisor can’t consider both patents AND trade secrets.
The right initial question to ask when you develop a new technology is “Do I want to patent this or not?”. This preserves the option to keep certain aspects, improvements, and optimizations a trade secret, yet still pursue patent protection on the foundational technology.
We developed a list of ten questions that are useful in answering the right question. They’re not a simple scoring, as the factors are sometimes weighted differently, but provide great guidance and insight as to the best ways to protect the technology.
- Is the technology eligible for patent protection in the desired country?
This first question is very fundamental – can you obtain patent claims covering your product or service in the desired country? If the answer is no, then you simply do not file for patent protection in that country. In some cases, it may be patentable in one country but not in another (such as business methods, medical diagnostics, and medical treatments). Sometimes it is not patentable anywhere.
- Is the technology easy, inexpensive, or quick to reverse engineer?
If a competitor can legitimately buy or source your product, they can open it up or analyze it to see what is inside (barring any contractual obligations not to do so). Some inventions such as methods of preparing something can be difficult or impossible to reverse engineer from the finished product.
Products that can be readily reverse engineered may not be well suited for trade secret protection, but may be candidates for patenting.
- Is the technology likely to be independently developed?
In hot or crowded fields, competitors will often be working on similar problems and arrive at similar or identical solutions. As long as there was no misappropriation involved, this is considered normal and acceptable. Patents may be useful to reward and protect the first one to develop a particular solution.
- Will the technology still be useful after the 3-4 years needed to get an issued patent?
Obtaining a patent is a slow and sometimes arduous process. It can often take 3, 4, or more years to get a patent granted. You cannot sue for patent infringement until your patent grants.
If the technology will be obsolete by the time the patent grants, then the patent has little or no value.
- Will the technology still be valuable 10, 15, or 20 years from now?
Patents can last up to 20 years, assuming that you pay all of the maintenance fees. Will the technology be commercialized long enough to recover the cost of the patent? If the technology will only be used for a short time, consider if the effort and expense of obtaining a patent is worthwhile or not.
- Will you be required to make public disclosure due to government regulations or product approvals?
Some sectors, especially those relating to pharmaceuticals, surgical implants, and other medical diagnostics and treatments, have strict disclosure rules. Companies seeking regulatory approval have to submit large amounts of data on the products and related clinical trials.
In some cases the applicant can request that trade secrets be redacted from the regulatory submission, but some jurisdictions essentially do not allow redaction of trade secrets at all.
Patents are still important for regulatory filing, such as in the FDA’s “Orange book”.
- Is the value of the technology more than the considerable patent expense?
You don’t want to spend more on protecting a technology than it is actually worth. Patents and patent portfolios are not inexpensive. Their cost to obtain and maintain should be a very small fraction of revenue or profit from covered products and services. If not, the patent could be a large “tax” on the products and services, potentially making them not commercially viable.
- Do you have weak or no policies & procedures to protect trade secrets?
To protect and enforce trade secrets, you need to take proactive measures before you have a misappropriation or theft problem. A key part of demonstrating “reasonable measures” is to have policies and procedures in place and followed. If you do not take these measures, your chance of prevailing in litigation or other dispute resolutions is significantly decreased.
- Do you have weak or no employment contracts and NDAs with employees and partners?
Contracts that provide confidentiality are a key component in protecting trade secrets. Without them in place, it is much harder to show that someone had an obligation to keep your confidential information confidential. You can try to say there is an implied obligation, but that’s much harder than a signed contract.
- Do you have high employee turnover?
The old days when employees would spend their entire career at one company are gone. Employee mobility is prevalent, and the tenure time at a job keeps getting shorter and shorter. In some industries and geographies, employees change jobs every year or even every six months. With increased employee migration comes a higher risk of trade secrets moving with them.
For these ten questions, if you answer “yes”, that suggests that you should consider filing a patent. If you answer “no” on the other hand, filing a patent is a less attractive option, and you should consider maintaining the information as a trade secret. In either case, creative attorneys will find ways to use patents and trade secrets to maximize protection for their client’s products and services.
Protect what matters before it’s public.
Talk with Tangibly about combining patents and trade secrets.
Why are programs and data considered trade secrets?
Because they contain algorithms, models, processes, and customer insights that provide competitive advantage. When exposed, the loss is immediate and irreversible.
What is the first step to protecting programs and data?
Create an inventory and identify which assets qualify as trade secrets, including code, models, datasets, prompts, and internal tools.
Why is classification important for trade secret protection?
Classification clarifies sensitivity, risk, and required controls. It strengthens governance and ensures teams understand how assets should be handled.
How does access control prevent trade secret loss?
Limiting access by role, tracking interactions, removing outdated permissions, and restricting repositories prevents internal misuse and accidental exposure.
How does AI increase the risk of trade secret leakage?
Employees often paste confidential information into public AI tools, causing it to become training data. Governance and private AI tools prevent this.
What legal agreements support trade secret protection?
NDAs, invention assignment agreements, contractor agreements, and offboarding processes ensure confidentiality obligations are clear and enforceable.
Why is employee training essential for protecting trade secrets?
Most exposure occurs through human behaviour. Training builds awareness and creates a culture of confidentiality across the organisation.
How do audits improve trade secret protection?
Audits identify weak points like outdated access, unsecured repositories, shadow AI use, and untracked datasets — key for legal defensibility.
How does Tangibly help protect programs and data?
Tangibly provides automated trade secret identification, classification, access tracking, governance workflows, and AI-driven risk detection.
