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Case A
Applying for a Patent while Keeping Part of an Invention a Trade Secret
A company develops an electrical system that includes two commercial off-the-shelf components that transfer back and forth large amounts of data. The inventors discovered that a thin gold coating on the conductors forming the data paths between the two components greatly increased the capacity for data transfer, so much so as to become commercially advantageous despite the additional cost of the gold.
The company wanted to patent the system but also wanted to maintain the option of using the gold coating as a trade secret. The company instructed the inventors not to disclose that feature to anyone, so the patent attorney wrote the patent application unknowingly omitting the feature.
U.S. patent law requires disclosure of the “best mode” of an invention as a condition for the grant of a patent. However, the patent examiner did not know of the invention’s gold coating feature, so she allowed the application to become a patent.
Later, the company sued a competitor for patent infringement. The competitor’s attorneys informed the court that the patentee concealed the best mode of the invention, the advantageous gold coating on the conductors. (Attorneys have resources for obtaining such relevant information.) The court responded by holding the entire patent unenforceable. In other words, the company could not stop its competitor from practicing the invention. Now, the competitor even knows about the gold coating feature and is free to exploit it without payment to the inventor.
Either the patent attorney preparing the application did not adequately question the inventors regarding the preferred modes of operation, or he did but the inventor consciously chose to conceal those modes. The result is a patent that cannot be enforced against competitors.
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I constantly follow the ever-changing law so that I can advise my clients how not to make the same mistakes that others have made. If it interests you to learn from the mistakes of others, I invite you to contact me to schedule a session where we will examine your patents and patent applications for any weaknesses and, if necessary, discuss how to correct problems before they occur.