Numerous articles and commentaries following the enactment of the Defense of Trade Secrets Act (DTSA) recognized the benefits of the DTSA, but they have not addressed the benefits of using the DTSA together with the U.S. Patent and Trademark Office (USPTO) patent application process to extend the available option of trade secret protection instead of patent protection. It is possible to hedge the protection between trade secrets and patent protection by taking advantage of the secrecy provided to U.S. patent applications prior to their publication. In compliance with international treaties, the current U.S. patent law calls for publication of U.S. patent applications 18 months after the earliest priority date claimed for the application. However, it is possible to avoid publication to protect the secrecy of the patent application’s disclosure and preserve the possibility of trade secret protection.
Current USPTO regulations specifically address the possible desire to avoid the 18th-month publication of a U.S. pending patent application. The major requirement for avoiding publication is the surrender of the option to seek foreign patent protection. The nonpublication request under 37 CFR 1.213 is straightforward.
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