North America: When to patent and when to maintain as trade secret (Video Chat)

In brief

Companies routinely face the decision of when to patent innovations and when to maintain them as company trade secrets. A lack of clear strategy and focus can lead to the loss of important intellectual property. Sara Pitt and Kevin O’Brien, two members of Baker McKenzie's North America Trade Secrets Practice, offer their respective patent and trade secret litigation expertise to identify and advise on some of the most important topics in this context.


Work through the strategic challenges in determining when and how to protect your company’s innovations. These include factors such as (i) eligible subject matter for patenting, (ii) the effects of unintended publication, (iii) the ability to maintain innovations secret upon commercialization, and (iv) practical enforcement considerations.

Key summary

  • As recent case law affirms, important decisions on whether to patent or maintain as trade secrets must be made early on to avoid inadvertent loss of rights.   
  • Each type of innovation should be separately considered for its role in the overall intellectual property portfolio of the company. 
  • Some types of innovations are uniquely appropriate for patenting, some are best suited for trade secrets, and many fall within overlapping areas where a company could reasonably choose either course of action.

Speakers: Bradford Newman, Kevin O'Brien, Sara Pitt

Contact Information
Bradford Newman
Chair, NA Trade Secrets Practice
Palo Alto
Kevin O'Brien
Partner, Intellectual Property
Washington, DC
Sara Victoria Pitt
Associate, Litigation & Government Enforcement

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