The Line Between Trade Secrets and Patents: Getting Dual IP Coverage on the Same Technology

3 minute read | July.24.2013

Some might think that patents and trade secrets are mutually exclusive forms of intellectual property protection, and they would be partially correct.  After all, a trade secret is information that is kept, well, secret.  Obtaining a patent, on the other hand, requires the public filing of an application that describes the invention in detail.  It would appear then, that one could never obtain both patent and trade secret protection for any particular subject matter. But a recent lawsuit by surgeon-turned-inventor Dr. Enrico Nicolo against the New York law firm Patterson Belknap shows how, in some circumstances, these two forms of intellectual property can coexist and fill gaps in the protections each offers.

Dr. Nicolo’s case is the latest in a series of lawsuits he targeted at Ethicon Endo-Surgery, a medical device and surgical instrument manufacturer, and its representatives.  In a plotline that dates back to the 1990s, Dr. Nicolo alleges repeated, premeditated theft of intellectual property.

Dr. Nicolo obtained or applied for a number of patents covering medical device technologies and met with Ethicon representatives several times to explore a business collaboration related to his inventions.  Ethicon always turned him down, but he claims they used the information they gathered from these meetings to pursue unilateral commercialization efforts.

Dr. Nicolo sued Ethicon for patent infringement in 2004, but that case settled.  After the settlement, Dr. Nicolo continued the seemingly unwise course of holding periodic meetings with Ethicon while at the same time suspecting Ethicon was using these meetings to misappropriate his ideas and competitive intelligence.

His latest complaint introduces a twist — Dr. Nicolo claims that one of Ethicon’s attorneys at Patterson Belknap misled him into believing that the attorney wanted to represent him to pursue infringers of some of his patents.  Dr. Nicolo alleges that he was deceived into disclosing trade secret information regarding his patented inventions and the competitive landscape, and that the attorney or his firm then passed on the information to Ethicon.

Patterson Belknap filed a motion to dismiss the complaint on the grounds it doesn’t identify any misuse of the allegedly stolen trade secrets.  But this scenario illustrates how patent and trade secret law, which in some instances are fundamentally at odds, can provide complementary protection in others.

One example is information in a pending, unpublished patent application.  Patent applications remain confidential for the first 18 months after they are filed, at which time they are published and become publicly available.  Before publication, the information in a patent application is protectable as a trade secret, whereas publication eliminates any trade secret status for the contents that might otherwise exist.  While Dr. Nicolo’s most recent complaint doesn't accuse Ethicon of stealing patent-pending secrets, his complaint indicates that he made such allegations against Ethicon in the past.

Trade secret protection may also be available for information about the invention that’s not disclosed in the patent application.  This could include undisclosed technical details or related commercial information.  Dr. Nicolo’s alleged trade secrets fall into this category, including the identity of competitors, marketing strategies, technical improvements to the patented inventions made after filing, potential customers, and the like.  Unique combinations of publicly disclosed elements may also be protectable as trade secrets.

While the jury’s still out on the success of Dr. Nicolo’s approach, this case is a reminder that intellectual property rights that aren't always easily reconcilable may coexist in some cases to offer maximum protections to a rights holder.