It Ain\'t What You Do (It\'s the Way That You Do It)

There’s an Intellectual Property right for (almost!) everything, and here we’re going to explore rights around manufacturing methods and processes. There are all sorts of methods a business might want to protect. Here, we’ll take a brief look at two principal ways of protecting new processes: patents and trade secrets.

 

Is patent protection available for manufacturing processes?

Yes. Patent protection is available not only for the products of manufacturing processes but also for the processes themselves.

 

This means that you can obtain a patent for a new way of manufacturing or using a particular product, even if the product itself is not new.

 

It is not only processes for producing products that are patentable either - all kinds of processes related to manufacturing can be patented: methods of using manufacturing equipment, and even methods for checking the quality of products, can be protected by patents. The methods may be carried out by a machine, they may be manual, or they may be computer implemented methods.

 

A method patent allows you to stop a competitor carrying out the protected method. It also allows you to stop a competitor selling anything that is a direct product of that method, so it can be a powerful right.

 

How enforceable is patent protection for processes compared to products?

If a competitor is producing a product, then it will probably be simple to get hold of the product to tell if they are infringing your patent. If a competitor is using a method, however, then it can be more difficult to find out details of the process and hence whether your patent is being infringed. Some companies will proudly display their manufacturing methods in advertising or on social media, which makes it easy to tell, but others may be more guarded.

 

Your patent attorney can advise you on how to deal with this. Are there tell-tale signs that indicate that your method must have been used? Would it be impossible to make the product any other way (or at least to make it at that quality or cost-point)? These clues may be enough to pursue initial action. Ultimately, you can force the competitor to reveal their process through the courts if you need to.

 

Is there anything in particular to think about when writing patent applications for processes?

When writing patent claims relating to methods it is important to make sure that the right ‘actions’ are included in, and excluded from, the claims. A good patent attorney will help you think about this, and pitch the protection to reflect your commercial activities and those of your competitors. Which method steps absolutely have to be carried out at the same site and/or by the same company? Are there any actions that could be carried out elsewhere, as pre-cursor steps, or post-processing steps? Are their different actions carried out at different stages of the product lifestyle (manufacture, installation and then use, for example?). Your method claims should be targeted at the actions that are carried out by the commercial entity you would most want to stop, and perhaps the one you could most easily or fruitfully pursue.

 

Are there any other options for protecting processes?

An alternative to patents is to protect the process as a trade secret by keeping it strictly confidential. To obtain this right, you must undertake “reasonable steps” to keep that information as a secret. For example, you might keep all knowledge relating to the process in question among only a small group of employees, and provide confidentiality training to these employees. If such “reasonable steps” are taken and the trade secret is then stolen and used by a competitor, then you can take legal action against the competitor. Trade Secret rights are inexpensive to obtain (though you do need to take care to have proper confidentiality and recordal processes), and last as long as you keep the information secret, but they can also be expensive to enforce.

 

Of course, a trade secret can’t protect you against a competitor working out your method for themselves – or reverse engineering it from anything you put out in to the public domain: it only provides protection against them ‘stealing’ the method from you. So, if your process could be easily reverse engineered, then trade secrets may not be a useful option for you.

 

Patents or trade secrets?

If you are weighing up whether to protect your new manufacturing process as a patent or as a trade secret, you should talk to your patent attorney to discuss all the relevant factors, and decide which route is best.

 

And you should necessarily think of patents and trade secrets as mutually exclusive - in fact, they can be a good complement to each other.

 

It is true that if an inventive process is published in a patent application then it is disclosed to the public, which means it can no longer be protected as a trade secret. However, it is quite possible to include some particular stages or features of a process in a patent, while keeping other aspects secret – perhaps some of the finer detail that optimises the process, or the details of a pre-cursor or finishing stage. If this balance can be struck, then you can reap the rewards of both the short-term patent right and the longer-term trade secret rights.

 

Get in touch with us if you are interested in protecting a manufacturing or other process and we can help you explore your options!