It is possible to protect its innovation or creation in several ways, including intellectual property rights (in particular, by copyright or a patent). But it is also possible to protect its innovation by secrecy, that is to say, keeping secret the constituent elements of its innovation, or its manufacturing process. The best-known and most commonly cited example of secret protection… Read more
It is possible to protect its innovation or creation in several ways, including intellectual property rights (in particular, by copyright or a patent). But it is also possible to protect its innovation by secrecy, that is to say, keeping secret the constituent elements of its innovation, or its manufacturing process. The best-known and most commonly cited example of secret protection is the Coca Cola formula. This has remained secret since the creation of Coca Cola in 1886, shared with a very small group of people. Another example which is that of Michelin; for a long time, Michelin has protected its tires and technology associated with secrecy and not patents.
The advantage of protecting a creation or an innovation by secrecy rather than by patent lies mainly in the fact that secrecy gives theoretically infinite protection over time, whereas a patent confers only very limited protection in the time (20 years). Clear: as long as a company is able to keep secret its creation or innovation, it is protected by secrecy; while with a patent, it is obliged to disclose its invention and features that will be published and therefore known to competitors. And after 20 years, competitors will be able to easily apply the teaching of their patent. In other words, if it is possible to keep a creation or a secret innovation, maybe it is better not to take a patent, because we can, based on a secret strategy, enjoy more protection. long (that 20 years) .If, on the other hand, it is considered that it will be difficult to keep a creation or a secret innovation then it is better to take a patent to enjoy an exclusivity during 20 years.
As summarized by Michelin, explaining that their policy is now to patent everything that is seen and everything that can be reverse engineered and keep the rest secret.
The question of whether it is better to protect a creation or an innovation by secrecy or patent law is complex, and needs to be the subject of a very careful and thorough analysis. To be able to solve it it is necessary in particular to wonder and by put the important questions to be posed:
• the life of this creation or innovation (very short or, on the contrary, very long?);
• on the patentability of this creation or innovation (if it is patentable, both options are open, if it is not, the patent is excluded);
• on the value of this creation or innovation?
• the possibility of reverse engineering by competitors (if reverse engineering is possible, protection by secrecy is unfavorable).
sources:
-encyclopédie de l’innovation p 323 to 325.
-https://www.inpi.fr
Choosing the protection of trade secrets over patents is not risk-free,however. While a patent will only remain in effect for 20 years or less,,the protection it provides is considerably stronger. All in all,a company must remain vigilant about protecting its secrecy bearing in mind that patents are way more important to be protected too.!!!
Florescu Ana-Maria
It is absolutely clear, that if the invention is patentable, you need to take a difficult decision to choose a possible protection option:
• patent the invention;
• keep it in the mode of commercial secrecy;
• or reveal its essence (what is called a defensive publication), thereby creating the conditions under which no one can patent this invention, as it will become a "public domain".
This… Read more
It is absolutely clear, that if the invention is patentable, you need to take a difficult decision to choose a possible protection option:
• patent the invention;
• keep it in the mode of commercial secrecy;
• or reveal its essence (what is called a defensive publication), thereby creating the conditions under which no one can patent this invention, as it will become a “public domain”.
This article helps to understand not only what type of protection to choose, but also how to do it. There’s why two roadmaps are proposed for the analysis: the one by Daizadeh et al., in 2002, and the other one by Jorda, proposed a little bit later, in 2007.
Comparing both of them, there are some differences: in the presentation and also in content. The Daizadeh’s roadmap is more visual and graphical, composed by 6 steps approach. The Jorda’s roadmap is composed by 11 questions, that are arranged by function: marketing, technical, legal (and scales for each of them). The Daizadeh’s roadmap analyse the possibility to choose not only between patent or trade secret, but also a defensive publication. From this point of view, the Jorda’s guideline is very precise just for two roads: patent or commercial secret. The roadmap proposed by Karl F. Jorda is more complex and includes some questions of legal topics (absent in the other one): validation by the court, the issue of inherent enforceability. It takes in consideration competitive advantages and disadvantages concerning exclusivity.
The two guidelines have some common points, for example: the reverse engineer questions and independent discovery, the public disclosure questions and the subjects of commercial significance, limited in time (or how quick technology actually develop). They have a lot in common simply because they have the same goal: to analyse which strategy to choose: patent or trade secret. The purpose of the patent and commercial secret is the same: to prevent the use of innovations by competitors and to benefit from monopoly use. But methods to protect are different: patenting involves the disclosure of information and further protection, including the right to prohibit and use this decision without the consent of the patent holder under the threat of prosecution. A trade secret implies protection through secrecy. (Nothing is disclosed, but in the case of disclosure or independent discovery, rights are effective as long as confidentiality is maintained.)
So, the two roadmaps do complement each other. The Daizadeh’s roadmap is more general and Jorda’s roadmap is more complex and structured. If a manager has to choose between the two models, he better begins with the Daizadeh’s guideline (to have an abstract idea of the solution) and then switch to the Jorda’s guideline (to have a more precise positioning).
The patent of invention is the subject of a title established and issued by institutional bodies conferring to its holder, a monopoly of exploitation on an invention for a limited time to twenty years and in a determined and circumscribed territory.
This mode of operation, generating a private and exclusive right to its depositor and his eventual subsequent licensees, is therefore… Read more
The patent of invention is the subject of a title established and issued by institutional bodies conferring to its holder, a monopoly of exploitation on an invention for a limited time to twenty years and in a determined and circumscribed territory.
This mode of operation, generating a private and exclusive right to its depositor and his eventual subsequent licensees, is therefore primarily based on the revelation of knowledge and their technical implementation. These data are therefore accessible to the general public and at the end of this period of exclusive exploitation, they fall into the public domain, allowing anyone to freely exploit them.
If surprisingly for such a successful right, the Code of Intellectual Property does not give us a definition of the patent, it is nevertheless possible to affirm that it is the result of an effort of intelligence, intended to produce a technical solution to a previously unresolved technical problem. It is therefore an applied creation.
The company’s overriding goal of maintaining a patent system is often touted as an incentive for innovation, as indicated by Kenneth Arrow’s early work on the patent. This is only partially correct because the incentive to innovate is only a side effect of the system. The propensity to innovate is in the human nature of reservation systems of the fruits of innovation. Many areas of human activity are teeming with innovation without the need for a patent. The real challenge of offering patent protection is public disclosure of that knowledge. The justification of the patent system must be sought in the commitment of the person filing the patent application to bring his invention to the attention of the public.
In the context of industry competition, it is not uncommon to see companies file false patents, R & D work that has proved ultimately fruitless, but likely to induce the competitors interested in the innovations of the inventor. Thus, in the field of patents, and with regard to legal strategies of economic intelligence, it should be noted that this tool can be converted into a weapon directed against competitors. Beyond the legal protection conferred on patents, the fact remains that some companies are reluctant to disseminate their technical knowledge skillfully and for a long time.
However, if a patent is initially a blank sheet on which are affixed the technical and industrial claims, they must nevertheless be necessarily explicit. By doing so, the applicant cannot voluntarily impinge on data that he would have liked not to disclose.
Therefore, for these reasons in particular, but still for reasons of cost and exploitation, some commercial companies still prefer business secrecy to the patent.
On the other hand, these same companies have sometimes been able to initiate R & D work, which is long and expensive, but which has not succeeded and whose results are not up to the expectations and efforts made.
But for all that, and knowing that it is opportunistic, the company will not for all that give up patenting the work leading to a technical impasse, knowing full well that the competitor will scrutinize the alleged claims and perhaps be inspired by them. A patent can therefore be used maliciously as a technological and economic lure.
Also, the secrecy of inventions, beyond the time necessary to develop and develop the inventive idea, carries a significant risk of delay in harvesting the benefits that it can reap from innovation, which can go until the total sterilization of it.
The natural tendency of the inventors and entrepreneurs of the competitive field is to keep as long as possible the results of their research, so as to avoid being robbed and lose all the economic advantage they can represent.. Even today, Coca-Cola and Ferrero have their manufacturing secrets intact.
All surveys of business leaders show that secrecy remains the mode of protection considered most effective by a large majority of them.
Just behind is the protection offered by the technological advance: being the first to put a product on the market gives a competitive advantage that suffices for many companies. But it must be clearly seen that this mode of protection also relies in a certain way on secrecy, because it speculates on the time and effort it will take to access the knowledge contained in the product marketed and the deadlines involved in the industrial use of knowledge as well.
The patent, as a method of protecting innovation, is far behind.
However, a nuance is necessary because some branches of industry do not lend themselves to extensive use of secrecy and cannot be content with the only technological advance to make the profitable investment. The relative ease of reverse engineering operations and the low cost of manufacturing, not to mention the virulence of the actions of what is often called economic intelligence, which are all factors that can make illusory or inefficient the use of secret over a sufficiently long period.
In the branches concerned, recourse to the patent is very often an indispensable precaution. In these patent-intensive areas, there are traditional industries, such as chemistry and pharmaceuticals, as well as new industries with high renewals, such as information technology, telecommunications or biotechnology. This is where the deal proposed by the company makes sense and produces its best effects.
Moreover, apart from the patent and the secret, another concept called defensive publication can be brought to light. The purpose of the defensive publication is to convey to the public the details of an invention in order to block patents related to the guiding idea. Defensive publication is advocated when the negative effects of secrecy and patent for our invention arise.
Finally, Authors have therefore advocated proceedings s to make the optimal choice for the protection of innovation. Daizadeh et al highlighted in 2002 a roadmap to answer 6 questions related to protection and allowing innovators to inform their opinion when choosing between the patent or the secret.
Later, Jorda establishes in 2007 a new line of conduct which proposes a roadmap presented in 11 questions where the innovator will answer by a numerical data in order to refine his choice concerning the attribution of the patent or the secret. According to Jorda, the patent and the secret would allow a powerful protection. Patents and trade secrets are not incompatible. On the contrary, they can complement: patents protect inventions and trade secrets protect collateral know-how. The joint use of patents and trade secrets in a synergistic way results in powerful exclusivity.
In my opinion and after analysis of the information, it seems undeniable that the Patent VS Secrecy approach is too simplistic and that the real question to ask is “what will the patent bring me compared to what it is going to make me lose? ” . The best solution appears as a combination in time of the two modes of protection with the secret first, and then the patent as shown in the example of the Ecke family and their Poinsettias flowers.
Dans un premier temps, j’aimerais pouvoir noter la différence certaine à première vue de ces deux feuilles de route. Effectivement, la feuille de route de Jorda quant à son étendue et son nombre de questions semble être plus précise et mieux structurée que la feuille de route des auteurs Diazadeh et al qui elle ne compte que six étapes, mais… Read more
Dans un premier temps, j’aimerais pouvoir noter la différence certaine à première vue de ces deux feuilles de route. Effectivement, la feuille de route de Jorda quant à son étendue et son nombre de questions semble être plus précise et mieux structurée que la feuille de route des auteurs Diazadeh et al qui elle ne compte que six étapes, mais qu’en est-il réellement ?
Pour pouvoir répondre à cette question et savoir quelle feuille de route est la mieux adaptée pour qu’un agent économique puisse répondre à la fameuse question réputée dans le domaine de l’innovation brevet ou secret ?, nous verrons dans un premier temps, les points sur lesquels ces deux feuilles de route se rejoignent et arrivent aux mêmes conclusions, dans un second temps nous étudieront les points sur lesquels elles se complètent et pour finir nous verrons les points sur lesquels ces feuilles de route se contredisent.
Tout d’abord, avant toute chose, j’aimerais noter que la publication défense n’est que très peu conseillée par ces deux feuilles de route. Il me semble pourtant intéressant de noter les avantages que ce type de pratique permet. Effectivement, la publication défensive permet à des entreprises de « contre-attaquer » de futurs possibles brevets qui lui conféreraient une sorte de barrière à ses futures innovations. Ce principe permet aux chercheurs de se garantir, un libre accès à ces innovations qui seront grâce à ces publications défensives tombées dans le domaine public. De plus, ce type de pratique confère un second avantage qui est celui de ne pas supporter les coûts de mise en place de brevet qui s’avèrent la plupart du temps très onéreux et qui pour certaines innovations ne sont pas à la hauteur des moyens engagés.
Je pense donc que ce moyen de protection devrait être reconsidéré, car il permet de faire face à différentes difficultés.
Ces deux feuilles de route se chevauchent concernant un sujet particulier qui est celui de l’ « ingénierie inverse », effectivement ces deux feuilles de route semblent se mettre d’accord sur ce sujet. En effet, ces deux modèles considèrent que si l’ « ingénierie inverse », c’est-à-dire la découverte par les autres entreprises des différentes innovations mises en place par la société innovante grâce à une étude des différents produits, est forte et plausible alors ils considèrent qu’il faut que l’entreprise mette en place un brevet.
De plus, ces deux analyses traitent d’un même point qui est celui de la divulgation, pour le modèle de Diazadeh et Al si la divulgation publique est nécessaire l’entreprise doit breveter, pour le modèle de Jorda, ce thème est également évoqué dans la question 7 en effet, il dit que la divulgation d’une étape peut « influencer si le produit final doit être breveté ».
Ces deux modèles se chevauchent donc sur ces deux points essentiels à la prise de décision.
De mon point de vue, la feuille de route de Jorda semble le plus compléter la feuille de route de Diazadeh et Al. Tout d’abord, le modèle de Jorda étudie la question de l’exclusivité sur le marché, en effet, il considère que si cette exclusivité est importante et d’autant plus avantageuse, l’entreprise aura tout intérêt à mettre en place un brevet plutôt que le secret. En revanche, si cette exclusivité n’est pas importante, elle pourra mettre en place le secret.
Un second point concerne la mise en place d’un brevet faible, c’est-à-dire de toute innovation qui n’intéresserait aucun agent économique. Le modèle de Jorda considère tout de même que la mise en place de ce brevet serait essentielle.
Et pour finir, il aborde un dernier sujet qui est celui du nombre de personnes ayant accès à l’information de l’innovation dans une entreprise. En effet, ce dernier pense que si beaucoup de personnes y ont accès la mise en place d’un brevet est essentielle, car le secret aurait plus de chances d’être divulgué.
Enfin, ces deux modèles se contredisent sur un point essentiel qui est celui de la prise de décision concernant la « durée de vie » de la technologie. Le modèle de Diazadeh et Al considère que si « la zone technologique évolue rapidement », la mise en place du secret est la protection intellectuelle la plus appropriée. En revanche, pour Jorda, c’est l’inverse, en effet, ce dernier considère que si le développement commercial et donc la zone technologique comme évoquée par le modèle Diazadeh et Al va être limité dans le temps, il faut mettre en place un brevet.
Enfin, nous pouvons noter une principale différence dans le mode de prise de décision de la mise en place du brevet ou du secret. Effectivement, dans le modèle de Diazadeh et Al, la prise de décision se résume seulement à une succession de réponses aux différentes questions à savoir, soit oui, soit non. Tandis que dans le modèle de Jorda, la prise de décision est selon moi beaucoup plus précise puisqu’il permet aux agents économiques de répondre aux questions sur une échelle entre 1 et 10. À la fin, suivant le score obtenu, l’agent économique aura une réponse à sa question secret ou brevet, puisque le modèle lui déterminera l’une ou l’autre solution.
En conclusion, je pense que le modèle de Diazadeh et al est plus clair et facilite la compréhension, mais que la feuille de route de Jorda oriente mieux quant aux choix à faire entre secret, brevet ou publication défensive.
Néanmoins, je pense que ces deux feuilles de route sont complémentaires et qu’elles pourraient être d’autant plus efficaces si elles étaient regroupées en une seule feuille de route qui serait plus précise et complète.
Secrecy vs. Patents : how to choose ?
Le cas de la découverte des poinsettias illustre le choix d’un agent, qui innove dans un secteur, entre la protection juridique du brevet et le secret. Dans le cas présenté, la famille Ecke décide de protéger leur innovation uniquement par le secret. Pourtant, même sans brevet l’entreprise familiale a pu jouir de sa… Read more
Secrecy vs. Patents : how to choose ?
Le cas de la découverte des poinsettias illustre le choix d’un agent, qui innove dans un secteur, entre la protection juridique du brevet et le secret. Dans le cas présenté, la famille Ecke décide de protéger leur innovation uniquement par le secret. Pourtant, même sans brevet l’entreprise familiale a pu jouir de sa découverte – la fleur poinsettia – durant des décennies, plus encore que si elle y avait recouru.
Aujourd’hui la firme Paul Eck Ranch possède la moitié du marché mondial de « l’étoile de Noël » et aucune autre entreprise n’a pu rattraper son retard. On peut donc supposer que depuis plus d’un siècle la famille Eck a su prendre les bonnes décisions pour conserver leur innovation et la faire fructifier à travers les générations.
Si le cas des « étoiles de Noël » est très particulier, peut-on synthétiser un modèle général pour que les entreprises prennent les bonnes décisions pour jouir de leurs innovations ?
Le schéma de Daizadeh (2002) tente de répondre à cette question par une « feuille de route » (roadmap) qui intègre une troisième option de protection au-dessus du brevet et du secret. L’agent qui innove va disposer de la technique de la publication défensive, elle s’applique dans le cas où les coûts de brevetage sont supérieurs aux gains qu’engendrerait le produit s’il était mis sur le marché. Dès lors que l’innovation est publiée, elle tombe dans le domaine public et ne peut plus être brevetée, ainsi cette option présente un moyen de protection sans subir les coûts du brevet (aux Etats-Unis le prix d’une demande de brevet s’élève à 530$ au minimum). Cette troisième option est souvent utilisée par les scientifiques qui font des découvertes majeures mais qui ne peuvent être appliquées au marché dans l’immédiat.
Dans ce même schéma, Daizadeh résume le choix Paul Eck Ranch pour le secret. Dans le cas d’une découverte qui n’a pas besoin d’être dévoilée au public, qui n’a aucun intérêt à être disponible en licence d’utilisation, et qui est faite sur un secteur où la technologie change rapidement le secret est le meilleur moyen pour conserver l’innovation.
S’agissant du brevet, il est intéressant pour l’inventeur de recourir à cette option s’il peut espérer des revenus supérieurs par le brevet ou la licence d’utilisation à ses coûts de brevetage.
Si nous revenons au cas des « étoiles de Noël », nous avons affaire à un exemple remarquable de ce que Daizadeh a expliqué un siècle plus tard de manière théorique. Ainsi la protection juridique d’une innovation par le brevet n’est pas le seul moyen applicable.
Through the story of Poinsettias, this article tries to determine which innovations protection choice is the most profitable for the innovator; indeed, we know that it is important for the innovator to protect his innovation in order to guarantee him a monopoly and the associated annuity as well as cover up for the achievements made. Without this protection, which will… Read more
Through the story of Poinsettias, this article tries to determine which innovations protection choice is the most profitable for the innovator; indeed, we know that it is important for the innovator to protect his innovation in order to guarantee him a monopoly and the associated annuity as well as cover up for the achievements made. Without this protection, which will take several forms as we shall see, the innovator has less incentives to innovate since his innovation is easily imitable by competitors.
First, the innovator wishing to protect his invention has the choice between two main protection methods: to grant a patent or to protect his innovation by a secrecy.
There are many good reasons to obtain a patent for the innovator despite of the debate on the intellectual property rights justification; It enables an operating monopoly for 20 years, permitting to the applicant to secure a return on invests and to prepare a future marketing. The patent dissuades competitors from doing a copy of product because it confers a juridical basis to sue possible adversaries; That’s why we say the patent confers to the inventor the right to exclude other actor of the innovation’s use. Furthermore, the patent allows to reduce confidential pressures because the innovation’s description is detailed in the patent’s document. In addition to this advantages, the patent allows to make profit with royalties paid due to license agreement, what’s correspond to the market of ideas because the firm “is selling” his patents and not his products. But the patent doesn’t prevent about infringement because it allows disclosure and it represents a non-negligible cost (on average 6000€ in France and 8000§ in United States).
However, when patentability’s conditions are not combined, the inventor can have recourse to secrecy to protect inventions. In my opinion, the secrecy is less formal than the patent because few texts control it. Inventors or companies whose choose the secrecy to protect their inventions, make the choice to not disclose manufacturing process also called “know-how” and this, for an unlimited duration, unlike the patent which expires after a certain period and which is not confidential: In the article, Ecke’s family success with poinsettias is due to the secrecy of the grafting’s technique, unknow to competitors for nearly a decade; Secrecy allowed the Ecke family to protect their innovation for a longer period than if they had been granted a patent. But inventor should implement conditions to keep the secrecy, vis third parties thanks to confidentiality agreement and vis possible employees thanks to employment contract. The secrecy can confer a sustainable competitive advantage if the inventors put in place rigorous management.
Contrary to the two first protection’s method, it exists another approach called: defensive publication which be expressed by a public disclosure of details of an invention in order block future patents in the same concept. The purpose of a defensive publication is to destroy the balance of the deal by disclosing an invention to the public, in general publication should be considered when the cost of patenting outweighs the benefit of the patent monopoly and the invention cannot be protected in a manner that is sufficiently secure to support trade-secret protection.
It is in the goal to determine which strategy is the best that several authors have represented roadmaps to help innovator to choose the good protection. The first roadmap was proposed by Daizadeh et al in 2002 in which we can find a general approach for determining when to patent, publish, or protect information as a trade secret while answering yes or no to 6 questions. The second roadmap was created by Jorda in 2007 and is proposing a list of 11 questions to help the innovator to choose between patenting or secrecy, defensive publication is not included.
In conclusion, we have seen it exists several different ways to protect an innovation or an “know-how” for the inventor and each have advantages and inconvenient but mostly depend of the innovation’s type and the opportunity to keep the invention secret. But in general, these three methods allow companies to generate incomes and promote them even if the third method is relatively new and companies are chilly at the idea to disclosure their innovation but the reality has showed this is a method that has borne fruit and its development is to be expected.
As said in the article, the innovating firms have to make a choice between guarding their innovation secret or to get it patented. This is a very strategic choice because both, patent and secret, have their benefits and drawbacks.
I think that choosing the secret is the more risky way. On the one hand you have an unlimited period in… Read more
As said in the article, the innovating firms have to make a choice between guarding their innovation secret or to get it patented. This is a very strategic choice because both, patent and secret, have their benefits and drawbacks.
I think that choosing the secret is the more risky way. On the one hand you have an unlimited period in which the secret can be kept, but once it is divulged everybody has the opportunity to imitate your innovation, which is very harmful for your company’s profit. Moreover, after dissemination of your secret it can be patented by someone else than the innovator. Compared to the patent, the secret is without direct charge; you don’t have fees to register your innovation. Indeed, it can cost very much too to keep your innovation secret for a long time. You have to adapt at the secrecy you strategy from the beginning. Moreover, we don’t have to forget that there are innovations that don’t fit the criteria to get a patent. For these innovators the secret is the only option to protect their innovation.
On the other hand we have the patent. In my eyes, it is the more secure way. Even if you have to describe every little detail about your innovation, you are sure that it will be protected for a certain period and that you will get the corresponding revenue (if the innovation is a success). In addition, the whole patent system may accelerate the innovation sector. It can be seen as a system to share knowledge and this may contribute to the evolution of new technology. Patents allow others to avoid non-sense investments in research and development in domains, which are already exploited. This is a surplus for the whole economy and not only for the innovator, like it is the case for the secret.
There is a third option mentioned in the article: the publication. It consists in the fact, that you publish your innovation, which induces that no one else can get a patent on it. This makes the use possible. Not only the innovator can benefit from the innovation but also others. It is the least expensive method.
As a conclusion I can say that even if I would prefer to patent my innovation, many firms show us, that the secret is also a very good option to become successful. The sector that the innovation belongs to and the riskiness of the innovator will clearly influence you choice.
Innovation contributes to buisness success, but a innovative company must ask itself the most important question : what is the most effective way to protect an innovation ? Indeed, they face a risk of pillage of their innovation and/or counterfeitinf. Then they have the choice between keeping secret or patents. We will try to see that solution is the most effective.
Patents protect… Read more
Innovation contributes to buisness success, but a innovative company must ask itself the most important question : what is the most effective way to protect an innovation ? Indeed, they face a risk of pillage of their innovation and/or counterfeitinf. Then they have the choice between keeping secret or patents. We will try to see that solution is the most effective.
Patents protect a technical innovation ? The protected invention must meet 3 contitions : be new, be subject of industrial application and involve an inventive subject.
The main disadvantage is that it involves potentially high costs by deposit fees,… The patent hasn’t immediate effect, there is a waiting time for obtaining it and has a limited period.
Moreover, the patent has the disaventage to force the applicant to reveal his invention, so the patent gives to the competitors the acess at the technological information of the company 18 months after the obtention of the patent. Patents are a less risked methods, it permits to offering a much greater protection than the secret by ensuring the right to exclude competitors with certainty.
Secret protection can be used, and it can also be a relevant strategic choice to keep an innovation secret. In addition, innovations that the secret protects can complement or extend a patented invention. Protection is unlimited in time as long as the secret exists. Secret is not an exclusive right, i.e if the competitors discover it then the company is no longer protected and it can’t prevent competitors from reproducting its product, that is what makes the protection difficult.
This method has an advantage in comparison of patents, it has lower costs because it doesn’t require approval, and there is no waiting time, so the process is easier.
Moreover, unlike the patents, secret makes it possible to protect processes, manufacturing formules, technical knowledge used in an industrial, organizational or commercial process.
Daizadeh et al in 2002 proposed a roadmap and introduce a third way to protect innovation, defensive publication. This method consists in publishing inventions in technical or comercial journals in order that competitors can’t patent an identical idea. This method is a quick and inexpensive way to protect an innovation and is therefore accessible to small and medium sized firm.
This option appears to be more favorable if the IP and litigation costs are higher thant the patent’s excpected income.
To conclude, the choice between secret, patent or defensive publication must be chosen judiciously. There isn’t better protection than the others, the choice depend on the type of innovation and the size of the company.
All innovators are facing the same problems. «Should i keep my innovation secret or patent it? »
Both of them are different ways to protect innovations.
We are here looking for the most effective solution.
First solution would be secrecy :
Principle of trade secret protection is the innovation must be kept secret, as opposed to patent protection, where innovation has to be disclosed… Read more
All innovators are facing the same problems. «Should i keep my innovation secret or patent it? »
Both of them are different ways to protect innovations.
We are here looking for the most effective solution.
First solution would be secrecy :
Principle of trade secret protection is the innovation must be kept secret, as opposed to patent protection, where innovation has to be disclosed worldwide.
Trade secrets keep a kind of competitive advantage because innovation is not revealed. But once it goes into public domain, this advantage no longer exists. This requirement makes the protection difficult.
Secrecy has no deadline in comparison with patents, but protection can be lost in some ways (spying, inadvertence)
Also, trade secrets don’t require any approval that makes the process easier. It means that this process is not very expensive because there are no authorities that analyze the domain, field of innovation but keeping informations secret can cost a lot.
The lack of authorities means that there is not a waiting time in comparison with the patent which have to wait for the authority to say if the innovation is patentable or not.
Competitors are in the total blur because absolutely nothing is revealed.
On the other hand, we have the alternative called patent.
A patent is a right granted to the innovator of an invention that prevents others from making, using, or selling the invention without his permission.
A patent provides exclusive rights for a period of time, generally 20 years. After this, the innovation becomes part of public domain and everybody can copy and use it. The innovator will not be rewarded anymore.
Patents can provide a quite large protection for innovation. They can cover almost any fields, but some of them can be difficult to patent. For example, softwares can be hard to patent because of the abstract idea.
However, patent registration can take a lot of time and money to be accepted or not by the Patent Office. This is one of the main obstacle for innovators.
According to Andrei Mincov “A patent is good for 20 years after the filing date, but it takes five years on average to get one. »
Some authors like Iraj Daizadeh David Miller include a third solution, a « defensive publication ».
A publication is a written announcement describing the innovation in a clear enough way that a skilled person in the same field can understand it.
This is the least expensive way and when a publication is made, only inventors can have a free use of the innovation. They share between them all the benefits.
The same authors made a roadmap in order to make the choice easier. Indeed, the authors suggest some cases for determining when to patent, publish, or protect information as a trade secret.
Another author, Jorda, offers us another roadmap more precise, with it’s 11 questions. In comparison, Daizadeh’s roadmap contains only 6 steps.
We can say that Jorda’s covers a larger part of the field, useful for a sharper, meticulously use.
In conclusion, the choice between patents or secrecy ends up being especially important.
Patents and trade secrets represent two of the most common methods to protect innovation.
According to Michael B. Fein “The choice of patent vs. trade secret depends on likely patentability and the possibility of maintaining secrecy,”
Is the company is able to keep the innovation secret for a long time in an efficiency way, then trade secret would be the solution.
To promote innovation the most efficiently way, we need both patent and trade secret protection.
Both of them can work together. While patents protect innovation, trade secrets can protect the know how.
The article introduces the third option of “defensive publication” when choosing between secrecy and patent to protect an innovation. It seems to be a more favourable option if IP and litigation costs exceed the revenue potential of the patient. Defensive publication is becoming a quick and cheap way of protecting intellectual property, especially for small and mid-sized companies which do… Read more
The article introduces the third option of “defensive publication” when choosing between secrecy and patent to protect an innovation. It seems to be a more favourable option if IP and litigation costs exceed the revenue potential of the patient. Defensive publication is becoming a quick and cheap way of protecting intellectual property, especially for small and mid-sized companies which do not have the resources to dedicate to the process of filing and obtaining a patent but want to ensure that competitors cannot stop them from commercializing a technology by filing a patent first.
Among the two roadmaps mentioned in the article, Jorda (2007) does not explore the option of defensive publication. Although, it can be said that any technology found to be patentable by the roadmap but the innovator doesn’t have resources to cover the patent cost may be published. Daizadeh et al. (2002) make the option explicit in their roadmap.
Although, the two roadmaps overlap when looking at the technical aspects of a product: possibility of reverse engineering and extent of disclosure, Jorda (2007) goes further to explore marketing and legal questions such as: competitive advantage/ disadvantage due to exclusivity, enforceability of a patent. Daizadeh et al. (2002) instead focus on the area of the technology the patent belongs to and how fast it is expanding. In that respect, the two roadmaps are complementary and a better decision can be arrived at by looking at the two together.
Daizadeh et al. (2002) roadmap asks some questions the answers to which may be very hard to ascertain as a clear yes/ no. Jorda while explaining his 11 questions mentions that it may be very difficult to ascertain if others could arrive at the same development independently even while they are working in the same field hence, it is easier to rate it on a probability scale than to make a clear yes/ no choice. For example, in electronic circuit design, it is may be found that 2 patented design are identical in function but differing only in the way the circuit components are laid out. This flexibility in Jorda (2002) roadmap allows for a broader scope of application.
In the same roadmap, each question is assigned a 1 to 10 value and then an aggregate score is calculated to make the decision. A very high or very low score is a clear predictor of the choice but a mid-range score (45-75) can often be ambiguous. The author then suggests looking at the kind technology in question to make the choice between trade secret vs. patent (often patents for products and trade secret for processes). This too lends a flexibility to the model that the former model is devoid of.
The two roadmaps are not contradictory because they lead to a similar conclusion for patent v. trade secret question for a wide variety of innovation. However, they explore different aspects of the technology and patentability and hence are complementary.
According to this article, there are two effective choices to protect an innovation. The one is secretary, and the other is patent. Which is the best way depends on the situation. Some innovations are suitable for secrecy, and others are suitable for patents. So, what is the difference between two situations? The answers are described on the roadmap.
There are… Read more
According to this article, there are two effective choices to protect an innovation. The one is secretary, and the other is patent. Which is the best way depends on the situation. Some innovations are suitable for secrecy, and others are suitable for patents. So, what is the difference between two situations? The answers are described on the roadmap.
There are two roadmaps in the article. The common points are whether there is a probability of licensing, reverse engineering, a probability that someone else will develop alternative means, and that someone will innovate same ideas. These all relate to the process of creating innovation. There are also some differences between two maps. Jordan’s map places greater emphasis on after innovation. For example, there are three questions about considering competitors, and it is also considered after licensing on Jordan’s map.
Jordan’s map has many questions about the relationships between innovation itself and competitors, potential competitors (like someone who planned to innovate the same innovation or has same ideas to innovate), companies etc. It leads whether to make the innovation a trade secret or a patent.
It is an age old debate for any innovator to choose between patenting his/ her idea and guarding it as a trade secret. The author of the above article adds another option to the list of choices namely publishing the idea to prevent competition from patenting it and yet ensure disclosure. Before falling prey to the tricky decision of how… Read more
It is an age old debate for any innovator to choose between patenting his/ her idea and guarding it as a trade secret. The author of the above article adds another option to the list of choices namely publishing the idea to prevent competition from patenting it and yet ensure disclosure. Before falling prey to the tricky decision of how to protect one’s innovation, he/ she must develop a sound understanding of the following aspect of his/ her idea.
End goal of the idea – If the innovator is addressing a societal problem for public good then the option of trade secret stands ruled out. The innovator is compelled to make a public disclosure to maximise the utility of the idea. He may then choose the publication route as a mark of goodwill or to allow other parties to further develop the idea. He may also choose the patent route to monetise his idea and ensure licensing to the right party for implementation.
If the innovation has been devised to address a gap in an existing business model and the ultimate objective is profit then the innovator may choose the trade secret route in the initial few days/ years. This can be adopted as a thumb rule as this allows the innovator to further refine the idea, and also gain any first mover advantage associated with the idea. After the idea has been pursued to an implementable stage, he may choose between the publication and patent route based on the framework discussed in the article.
There are other assessments associated with the idea that must be carried out namely patentability, practical feasibility, time frame of the gain, imitability etc. These aspects have been thoroughly discussed in the comments posted on the blog. Thus, I’ve restricted my answer to the one unique aspect of the idea which is yet to be taken into account.
Source – some thought on the article to devise original content!
Jorda (2007) and Daizadeh et al. (2003) established a way to support the decision-making when it comes to choose the way to protect an invention. However they seem to quite agree on the factors that should be taken into consideration, the two roadmaps propose two different approaches for the patent vs. secrecy dilemma. They are indeed both made of a… Read more
Jorda (2007) and Daizadeh et al. (2003) established a way to support the decision-making when it comes to choose the way to protect an invention. However they seem to quite agree on the factors that should be taken into consideration, the two roadmaps propose two different approaches for the patent vs. secrecy dilemma. They are indeed both made of a set of questions that relate to commercialization, easiness to copy and to the area of the new technology, but the possible results vary from one method to the other.
Daizadeh’s questions only provide one unambiguous answer among three possibilities: file a patent, use trade secrets or publish your findings. On the contrary, Jorda’s method can also lead to filing a patent or using trade secrets but it also discloses a third answer that leaves more room to interpretation.
This third possibility stands in the middle of the two first solutions and indicates that the protection that is chosen doesn’t especially matter. This means that, for a given area of technology, there would not be any prejudice to resort to the other strategy rather than to the one generally used in that area.
The paper also highlights the fact that a marriage of the two solutions can be considered as well: the company would then use both secrecy and patent simultaneously, which is not possible according to Daizadeh’s roadmap where the solutions are mutually exclusive.
Using trade secrets to stretch the protection of a patented invention is not inconsistent with the policy of disclosure implied by the patent, even if trade secrets and patent differ on this issue. To push the idea a little further, patents can even become perfect supplements to other forms of IP protection, such as trade secrets (rather than the other way around). Jorda proves this complementarity by showing that they serve different economic and ethical purposes (1). By comparing the differences of both kinds of protection, it appears that, while patents have multiple limits and take a long time to operate, trade secrets are implemented without delay to protect knowledge as long as the invention is not revealed or discovered.
The overlap between IP fields explained above clearly represents how Jorda’s roadmap differs from Daizadeh’s method, which only considers the types of IP protection as independent rather than as elements that can be combined.
On the other hand, Daizadeh et al. complement Jorda as they include another way to protect IP rights in the solutions of their roadmap, which is publishing the findings. This alternative was traditionally used for scientific discoveries but this is no longer true since research organizations and universities are more and more encouraged to associate with private entities such as companies to develop their projects (2). Scientific publications benefit from copyright and dissemination is a defensive way to protect knowledge at a minor cost.
"Trade secret or patent ?" that is the issue that all innovators are facing. To help them in their choice several tools exist, in this comment I will focus on two roadmaps given by Daizadeh et al. (2002) and Jorda (2007).
Before comparing the two tools, it might be useful to have a global picture of the pros and cons related… Read more
“Trade secret or patent ?” that is the issue that all innovators are facing. To help them in their choice several tools exist, in this comment I will focus on two roadmaps given by Daizadeh et al. (2002) and Jorda (2007).
Before comparing the two tools, it might be useful to have a global picture of the pros and cons related to the secrecy and the patent techniques.
On the first hand, the trade secret allows the company to keep the knowledge of its innovation private. It means that the company has no legal protection that prevent competitors to copy its innovation. The length of protection depends on how long it takes to the rivals to discover your secret. It implies that once your competitors have discovered your secret they can patent it and benefit from an exclusive usage.
On the other hand, the patent system refers to a legal right of exclusion. In other words, the company benefits for 20 years from a legal protection against imitators. Nevertheless, patenting an innovation requires disclosure, it takes time and it is costly.
Now, that we can differentiate the secrecy from patents, let’s compare the two useful tools that may help innovators to choose between both. In some extent the works of the researchers have common criteria. For instance, they both focus on the reverse engineering, the willingness of licensing, the market’s evolution and the market revenue.
However, the two roadmaps differ in some extent. Indeed, the approach of Daizadeh et al. is based on 6 steps that involve binary answers: “yes” or “no”. While the Jorda’s questionnaire consists of 11 questions with nuanced evaluation using a scale from 1 to 10.
Moreover, Jorda’s work covers a larger and more precise scope that includes for example the design around the innovation and the requirement to access other unprotectable information.
Besides that, Daizadeh et al. introduced a third category to protect an innovation: the defensive publication. This defensive strategy is not considered by Jorda.
To conclude, according to me, the two roadmaps are both complementary. In the first instance, I suggest to employ the 6-step technique in order to have a quick idea of which way is the most effective to protect the innovation. Then, I recommend to focus on the Jorda’s evaluation questionnaire to confirm the intuition provided through the first approach.
Daizadeh, I., et al. (2002). A general Approach for determining when to patent, publish, or protect information as a trade secret. Nature biotechnology, 20, 1053-1054.
Jorda, K.F. (2007). Trade Secrets and Trade-Secret Licensing. Intellectual Property
Management in Health and Agricultural Innovation: A Handbook of Best Practice. Online on http://www.iphandbook.org/handbook/ch11/p05/
The two roadmaps try to give an answer to the question: “What to do after I made a discovery?” Since (usually) much work and money has been invested in a discovery the innovator cares a lot about the answer. Therefore, it is helpful to get some advice.
Daizadeh’s roadmap suggests three different answers: Trade secret, Patent or defensive publication. But Jorda’s… Read more
The two roadmaps try to give an answer to the question: “What to do after I made a discovery?” Since (usually) much work and money has been invested in a discovery the innovator cares a lot about the answer. Therefore, it is helpful to get some advice.
Daizadeh’s roadmap suggests three different answers: Trade secret, Patent or defensive publication. But Jorda’s roadmap only leads to two different answers: Trade secret or Patent.
For a definition of these strategies see for instance Philipp Flesch’s comment.
Thus, I’ll proceed with the analysis of the roadmaps.
Jorda’s questions correspond to three categories: marketing (1-4), technical (5-8) and legal (9-11). There are no categories for Daizadeh’s roadmap but I will try to categorize some steps.
I start with the questions which are very similar to each other.
Question 1 is basically the same as step 5 in Daizadeh’s roadmap. Both are about earning revenue through licensing and both suggest to patent if licensing might be profitable (since licensing a secret does not work).
Question 2 is similar to step 6. Maximizing exclusivity (as it is called in question 2) works with a patent. Regarding the competitive advantage through a patent one should take the IP processing for receiving a patent into account since this process can be very costly. Additionally, one should consider litigation costs for maintaining exclusivity (step 6 explicitly addresses these points).
Since there are similarities between these questions one can conclude that step 5 and 6 also belong to Jorda’s category “marketing”.
Question 9 is a follow-up question on question 2/step 6. We have already considered litigation costs but what was missing before is the probability of winning in court. In Daizadeh’s roadmap this point is not mentioned directly but you might think about it while reflecting on litigation costs.
Question 6 and 8 are like step 2 and deal with the risk of your competitor making the same discovery. A complementary question is question 3, because it is concerned with the extent of the negative implications in this case (what is missing in Daizadeh’s roadmap).
Step 2 should belong to Jorda’s category “technical” like question 6 and 8 do.
Let’s turn to question 4: It is about the probably varying importance of the discovery over time. And as Yuhan Zhang said in her comment this question might be related to step 3 since this step is considering the change of technology over time. Here I also see the contradiction because the fact that there is a rapid change leads to two different answers (trade secret with Daizadeh and patent with Jorda). In my opinion, the suggestion of a trade secret is more reasonable, because the granting procedure for a patent takes a long time. Due to rapidly changing technologies, the granted patent might be worthless in the end.
Question 5, 7, 10 and 11 are left out in Daizadeh’s roadmap. But especially question 10 is, in my opinion, very important. If you answer this question with “yes”, a trade secret won’t be suitable at all. It does not make sense to have a trade secret when it is difficult to keep it secret.
In her comment Yuhan Zhang mentioned the missing differentiation between more and less important questions. I agree with her and would appreciate different weights for different questions. But when thinking about which questions might be more important than others one can realize the following: Some questions aim at the same point. There are questions 6 and 8 which are both about the threat of a competitor making the same discovery. This is a very important point and because there are two questions tackling this issue, this point has twice the weight compared to other points. For question 2 and 9 it is similar. Both aim the effective exclusivity of a patent. Having pointed that out, Jorda is, after all, distinguishing between more and less important considerations.
To conclude, I would say Daizadeh’s roadmap is very useful for students and other people who wish to have a quick overview about important considerations in case of an innovation, whereas entrepreneurs who actually have to decide what do with their innovation should consult Jorda’s roadmap.
Although patents are the primary source of protection for inventors, an inventor may choose to rely, instead, on the protection of conferred by trade secrets. Of course, as the two methods present different features, they induct to extremely different conditions and consequences that could affect the inventor’s revenues in an irreversible way. Then, the decision whether to patent or… Read more
Although patents are the primary source of protection for inventors, an inventor may choose to rely, instead, on the protection of conferred by trade secrets. Of course, as the two methods present different features, they induct to extremely different conditions and consequences that could affect the inventor’s revenues in an irreversible way. Then, the decision whether to patent or keep a trade secret is an important one.
In some cases, trade secrets are the only way to protect an invention, for example when the invention does not meet the criteria for patentability. But generally, for patentable inventions, the choice between patenting and adopting trade secret completely relies on the inventor’s decision.
Although trade secrets are a more risky method of protection, it presents many advantages.
Trade secret protection may be favorable when the benefit of the technology is of very short duration. For example, if the invention will be obsolete in less time than it would take for a patent to issue (which can take several years), or if the competitive advantage is gained by being the first on the market.
Another advantage of trade secrets is that trade secret protection is not limited in time. Thus, a trade secret may continue indefinitely as long as it continues to meet the definition of a trade secret.
An example could be the Coca Cola formula. Thanks to trade secret method, Coca Cola remains a leader in the world’s soft drink industry based on its secret formula, over 100 years later. If, instead, the company would have decided to patent it in 1886 when the formula had been invented, anyone could now be free to copy it.
Other advantages of trade secret protection are that trade secrets have immediate effect, and there are no prosecution costs or maintenance fees in order to establish a trade secret or to keep it in force. Nevertheless, even if any registration is required, trade secrets may still be expensive to maintain because of the costs associated with keeping the information secret. These costs include physically restricting access to the grounds and buildings where the secret is kept or used, restricting information to individuals in the company who need to know, labeling information as confidential, protecting electronic forms of trade secrets via means such as encryption, firewalls, and password protection, and drafting contracts for employees, suppliers, customers, and others, which clarify the existence of trade secrets and the duty not to disclose them (1).
On the other hand, patents provide a protection much stronger than trade secrets, ensuring the right to exclude third parts to commercialize a product. This is the reason why this method is highly recommended in fields characterized by a fierce competition and it represents a good response against reverse engineering. The “negative” aspect, comparing to trade secrets, is that patents only have duration of 20 years, after which the invention loses its protection against third parties.
Daizadeh et al (2002) and Jorda (2007) propose two different models to analyze which is the better choice between patents and trade secrets. It is important to note that Daizadeh et al added a further option in his model: the “defensive publication”, which consists in publishing the invention, making it part of the State of Art and so preventing someone else from patenting it.
The roadmap developed by Daizadeh et al is structured on six YES/NO questions – concerning, for example, the technological area, the characteristics and the estimated duration of the invention – which lead to the choice of the most appropriate method for a particular invention among the three solutions.
Jorda’s model, instead, is based on a questionnaire composed by 11 questions with answers going from 1 to 10. If the total score of the answers is below 45 patent protection is preferred, while a score above 75 determines trade secrecy as the best option.
At first sight, Jorda’s model may seem more complete and may lead to a more precise choice, but it is undeniable that the first model provides a quick summary of the point and includes the main areas that affect the final decision.
In conclusion, as the two models follow completely different criteria and their divergent approach to the analysis is not comparable, I believe that using both models would offer the inventor an accurate overview of the critical factors that could have an impact on the decision and to determine which the best strategy to follow is.
When it is time to protect an innovation, it is useful to think about the multitude of choices available: keep it as secret, patent it, use a mix of both (which could be used in case of complex innovation) or make it public. The most reasonable choice would appear to patent our invention because it will give us the warranty… Read more
When it is time to protect an innovation, it is useful to think about the multitude of choices available: keep it as secret, patent it, use a mix of both (which could be used in case of complex innovation) or make it public. The most reasonable choice would appear to patent our invention because it will give us the warranty to use our invention as we pleased during 20 years.
But is it really the best option? Some big companies, as Coca-Cola for instance, choose to favor secrecy over patent by keeping their formula secret. This could seem counterintuitive as keeping secrecy could increase the risk of other competitors finding the innovation and using a patent to force you to stop using it.
Questions need to be asked before choosing between secrecy and patent. In our case, two roadmaps (Daizadeh and Jorda) can be followed to determine whether or not it is better to choice secrecy or patent. The two roadmaps diverge in their way to conclude: when Daizadeh’s model guides you with a path to follow, Jorda’s model takes its conclusion with the total score obtained by answering questions. We can also point that Jorda doesn’t let the choice of publishing the innovation to act defensively. He only considers two options. Despite this, Jorda’s model takes into account a legal aspect that was left out by Daizadeh. However, they both point out that the choice between patent and secrecy needs to consider technical and marketing aspects which tend to be the core of the question.
Of course it is always likely to add more aspects which could leads to another conclusion. Secrecy or patent must be choosen as wisely as possible because underestimated competitors could lead to losing the lead provided by innovation.
When we build a company that creates something new, we have to trade-off between patent or secrecy. This is not so easy to answer due to some advantages and disadvantages that these two kind of protecting something propose. I will present advantages and disadvantages we face in that context by comparing them.
First of all, note that whether we choose… Read more
When we build a company that creates something new, we have to trade-off between patent or secrecy. This is not so easy to answer due to some advantages and disadvantages that these two kind of protecting something propose. I will present advantages and disadvantages we face in that context by comparing them.
First of all, note that whether we choose secrecy or patent, the goal is to protect our idea. But how long do we want to protect it? By asking this question, we can answer that a patent protects us during 20 years in contrast with secrecy that could protect us during illimited time. It means that if we need a protection during more 20 years, secrecy is the option but it allows us more risk. Indeed, by keeping our product secrect, the risk is that someone else could steal it and then patented it. In that case, we won’t have the permission to produce our product.
Keeping the product secret does not cost us. The cost we have to pay to patent a product could be very expensive and it is not always possible for some organization as start-ups.
Keeping secret could give motivation to people who work with you. In some cases, only few people know the secret (2 or 3 people only in the organization), but it is not really motivating for people who work with you and don’t know for what they work exactly. When people who work with you know all of the secret features of the products, they will be maybe motivated because of the trust you give them. Note that is also a big risk.
We probably won’t patent the product if the product is easy to copy with a few difference. In this case we are more likely to keep it secret.
Choosing the secret can give us the monopoly power during a very long time for the product.
What about the social welfare? In fact, if a company patents a product, competitors can create substitutes that are cheaper and so profitable for consumers. Furthemore, another reason could exist to keep the product secret. Looking at the example of Coca Cola could ask us some questions. Keeping the secret of the recipe is probably for other reason than advantages of the secret option. Indeed, disclosing the recipe by patenting it allows people to know exactly what they drink and because of that sales could go down dramatically in addition of being suing in the court because of some ingredients that provide some kind of disease.
At present, we are searching for new ways in order to promote and develop innovation. Today, the major incentives are:
1. Patent
2. Secrecy
3. Defensive publication
4. Contracted research
5. Inducement prize
These tools were developed with a simple aim: stimulate and reward innovation. Concerning the patent, it rewards an innovation by giving to its author the right to a monopoly, preventing any competitors to enter its market… Read more
At present, we are searching for new ways in order to promote and develop innovation. Today, the major incentives are:
These tools were developed with a simple aim: stimulate and reward innovation. Concerning the patent, it rewards an innovation by giving to its author the right to a monopoly, preventing any competitors to enter its market and allowing him to set the monopoly price (for a given duration). However, since a few years, the patent system tends to suffer from certain drawbacks. Specialists have been searching for better “incentive” systems. A rewarding prize system was suggested and it seems that it has successfully solved some disadvantages of the other systems. Unfortunately, a solution is never perfect and this option has its own disadvantages.
In this comment, I will try to show that none of the solutions here above is the perfect one, however, depending on the situations, using one or a combination of them should be recommended.
All these incentives have disadvantages, that’s why in my opinion a system composed of only one type of incentive is not optimal.
Main disadvantages of
– Patent: deadweight losses creation, silent patent, monopoly price, restricted use of knowledge, duplication of the research effort, innovator benefit from its patent only if capable to reach its potential market (so profit is not guaranteed), push to innovate only in fields where a profit can be made thanks to a patent.
– Secrecy: possible only if reserve engineering is impossible.
– Defensive publication : hard to make it profitable/ no monetary incentive to innovate so no compensation of the R&D costs,
– Contracted research: unobservable effort, asymmetric information, free riding and moral hazard problems.
– Inducement prize: only one winner the others have nothing, duplication of research efforts, the money prize may not compensate the spending in R&D, no patent on the innovation, how to implement your innovation outside of the inducement prize competition, prize must be attracting for the public and usually has a commercial goal, asymmetric information between innovator and the organisation of the prize.
Main advantages of:
– Patent: competition spirit pushes and accelerates the innovation process, diffusion of knowledge, monopoly, protection of your ideas.
– Secrecy: possibility to keep your idea secret indefinitely
– Defensive publication: can avoid a patent to be issued, free knowledge
– Contracted research: no risk concerning money because innovators are paid anyway, can be contracted in any field.
– Inducement prize: done on a voluntary basis which avoid any free riding effect and any moral issue, recognition and pride are the main motivations, no deadweight loss, availability of the breakthroughs, no need to monetize your idea, no monopoly, publicity when you win and a valuable marketing tool, encourages innovations in specific and precise topics, pushes teams to invest significantly more money than what they can win, opportunity for innovators to pursue a path that would otherwise be considered too risky (challenge the conventional wisdom of what is impossible), how do you choose the winner, focus on a precise challenge.
When we look at all these advantages and disadvantages we can see that each incentive has its positive and negative aspects. Competition cannot at the same time promote efficiency and drives the prices down.
Patents providing protection while promoting the diffusion of information has clearly been positive for the progress of Innovation since its establishment. Unfortunately, some incentives can be noxious for some sectors. Patent can be very restraining in the drug sector because poor patients are not able to pay the monopoly price for their medication. Patent are not recommended in sectors where there is no financial benefit, for example to solve social problems, medicine, pharmaceutical.
Concerning the prizes, they can be offered by anybody and some philanthropists are very interested in it. They can sponsor prizes to promote researches in “non-profitable” (in terms of money) fields (ex: social). However, the major problem of this system is to select correctly and objectively the winning innovation.
To conclude, prizes should be used when there is a clear objective and where the innovation is not profitable in terms of money.
This article gives information about two market-based mechanisms protecting an innovation: patents and secrecy. I will begin this comment by defining the two possibilities an innovator faces: patents and secrecy. Patents, according to your slides, concern the private value of innovation, and provide a monopoly profit for a determined number of periods (maximum 20 years). This kind of protection creates… Read more
This article gives information about two market-based mechanisms protecting an innovation: patents and secrecy. I will begin this comment by defining the two possibilities an innovator faces: patents and secrecy. Patents, according to your slides, concern the private value of innovation, and provide a monopoly profit for a determined number of periods (maximum 20 years). This kind of protection creates incentives by making good excludable. Moreover, once the good falls in public domain, its diffusion is ensured. The main differences with the secrecy are this last provides a monopoly profit only for as long as the secret does not leak (after, the innovation is in the public domain). Before that time, knowledge is non-rival and kept private, which gives incentive for production but creates social costs. Finally, secrecy offers no protection against independent innovations.
Those two roadmaps are useful tools to help innovator to choose which protection to adopt. Let’s compare these maps. The first one, presented by Daizadeh et al. (2002), is formed by a “cumulative path”, made by only “yes or no” questions, while the second roadmap, proposed by Jorda (2007), is a succession of independent questions, whose answers are classified by functions (marketing = low rate, technical = middle rate and legal = high rate), and the addition of it leads to a conclusion: patenting or keep secrecy. Notice that a nuance is made when the result stands in “the middle”, and sub-questions are asked to find the best way of protecting the idea. The map of Daizadeh et al. also considers a third way of protection: the defensive publication, which consists in publishing inventions in technical or trade journals in order to prevent rivals from patenting and establish prior art against competitors. It also talks about the necessity of public disclosure, the potential new area of technology, while the Jorda map takes into account the competitive advantage/disadvantage of being exclusive, the design around, the chances of validity of a patent, and the potential difficulty to control the internal dissemination in case of a secrecy. By this, they complement each other complements the other.
Then, I observe that they overlap each other in some points. First, they both address the issue of the likelyhood of being licensing. They also both consider the time of the change for a technology, the reverse engineering. However, none of them talked about social expected value or cost, which is a basic problem of innovation.
According to me, those maps face some limitations. To quote Jorda (2007) : “ Patents (which require full disclosure) and trade secrets (which are kept confidential) are not incompatible. On the contrary, they can complement one another: patents protect inventions and trade secrets protect collateral know-how. Using patent and trade-secret protection together in a synergistic manner results in a potent exclusivity. Moreover, as licensing has become the preferred instrument for technology transfer, most technology licenses are hybrids, covering both patents and trade secrets.” (Jorda,2007). This complementation of the two concepts is not taken into account by the two roadmaps.
Then, further in your IPdigIT blog, I found another complement to these maps. Indeed, sometimes there exists “patent-secret mix”, overall in the food industry, which consists in patenting a whole thing and keeping sub-innovation secret. For example, KFC patented its method of frying chicken but kept its “11herbs” secret. Macdonald also patented the method of making a sandwich, but made a secret of its “bigmac sauce”.
To conclude, these two roadmaps are complementing and sometimes overlapping each other. I found interesting to talk about the defensive publication alternative in the Daizadeh et al. map. However, I find the Jorda one is more complex and precise than the Daizadeh et al. one, asking independent questions, offering more answers, and letting a space for a “case-to-case” analysis.
As stated in the article, when a company makes a discovery it often has a choice between these two options : state secret and patent to protect it. The article also introduces the idea of a third option which is the publication of the invention in the case of potential revenues are lower than the costs related to a patent.… Read more
As stated in the article, when a company makes a discovery it often has a choice between these two options : state secret and patent to protect it. The article also introduces the idea of a third option which is the publication of the invention in the case of potential revenues are lower than the costs related to a patent. Indeed, if the cost of obtaining a patent is higher than the profits that could reasonably be generated by the invention, there is no interest in losing money in attempting to obtain a patent .
That said, we will not focus more on this case and we will analyze a little more in depth the difference between the secrets and the patents as well as understand why one is preferable to the other in some cases well specific.
Let us begin by clarifying that not all inventions are necessarily patentable, some conditions for obtaining a patent are not always fulfilled, which already closes the door of the patent for a whole bunch of innovations whose companies Inventors have no choice but the secret to protect them.
Beyond that, if the invention fulfills all the criteria of patentability, the company must make a choice. What are the advantages to protecting his invention by secrecy rather than by a patent:
– No limit of protection in time: As long as a secret is not discovered, it can not be used by another company.
– No expenses incurred. Obtaining a patent can cost a lot of money.
– No waiting times
– No formalities to respect, only precautions to take to avoid the disclosure of the secret.
The main problem with secrecy is that it can be discovered at any time and that if it is contained in a product nothing prevents competitors from examining the product to find the secrets it contains and use it for their purposes also since secrets do not give an exclusive right to prevent third parties from making commercial use of it.
Thus, to choose what is most appropriate between a patent or a secret to defend its invention, everything depends:
1- The risk that the company is ready to take (A risk averse company will choose the patent without hesitation).
2- The confidence of the company in its ability to keep the secret (Often quite complicated to keep the secrecy when it concerns a technology contained in a product intended for third parties).
3 -The probability that competitors will make the same discovery as inventors in a time that could be shorter than the term of protection possibly offered by a patent.
These two models are both trying to give path leading to the best decision in terms of protection: patent or trade-secret. At first sight, we could think that the second model (Jorda) is better than the first (Daizadeh et al.) one because of the numbers of stages; eleven questions instead of the 6 steps. Another argument could be the order… Read more
These two models are both trying to give path leading to the best decision in terms of protection: patent or trade-secret. At first sight, we could think that the second model (Jorda) is better than the first (Daizadeh et al.) one because of the numbers of stages; eleven questions instead of the 6 steps. Another argument could be the order in which the model were developed: 2002 for Daizadeh et al. against 2007 for Jorda. Again, the 6-step model seems to have the advantage. However, a further analysis is needed to confirm or not such a statement.
As far as I am concerned, I think that both models have positive points but also negative ones. I will here briefly list them in order to highlights the qualities I find valuable and then decide which one I find better.
The Daizadeh et al. model is represented by successive questions leading to the best decision for patentable invention. This represents the first advantage: the answers to the previous questions are determining which questions are upcoming next. This means we don’t take into account the same questioning for each result and if find it relevant in the perspective where we are in a case-by-case approach. The second advantage is that possible outcomes number three: trade secret, patent but also defensive publication, which is a relevant alternative to choose in certain case. A regret we may have by looking at this model is the simplicity compared to the other one.
The Jorda model is about computation of points obtained following the answer to each question. This aspect is leaving me perplex on several points. First, only extreme points are directly leading to an outcome being trade-secret for high score and patent for low score. Average score, according to Karl F. Jorda, “suggests that it doesn’t really matter which approach is followed initially”. I understand this idea of leaving a space for invention that the two options suit, however, in a case-by-case approach like this one I feel like a more precise answer in needed. Second, such a computation may lead to same results for totally different situations. For instance, a set average point responses (5-6-5-6) can be equal to a set of extreme but opposite responses (10-1-10-1). Nevertheless, this model also has advantages, such as the three categories it takes into account (marketing, technical and legal) and the number of answer to give is higher than in the six-step approach which means it may be more precise.
So far, I cannot really choose either one or the other model, even though I have a slight preference for the first model, my arguments are no enabling me to decide. They both take into account relevant features to distinct whether a patent or a trade secret suits the most an invention, such as time efficiency but less, even not at all, immediate (or not) effect, level of registration costs and intensity of effective competition. This is why I end up to the conclusion that both models could be used complementarily in order to take the most of each.
All of the inventors have to make the difficult choice between Secrecy and Patenting when they want to protect their innovation. Both have advantages and disadvantages.
A patent is a legal right granted by a government to stop others from copying, manufacturing, selling or importing your invention without your permission for a period of usually twenty years. Moreover, you… Read more
All of the inventors have to make the difficult choice between Secrecy and Patenting when they want to protect their innovation. Both have advantages and disadvantages.
A patent is a legal right granted by a government to stop others from copying, manufacturing, selling or importing your invention without your permission for a period of usually twenty years. Moreover, you can license your patent to others or sell it. This can provide an important source of revenue. But there are many disadvantages with the patent. The main disadvantage is that you have to reveal certain technical information about your invention even if you shouldn’t go into details. The procedure for applying for a patent can take a lot of time before the patent can be granted. Patent an invention can be really expensive and you’ll also need to pay annual fees and you need to be prepared to defend your patent which can as well cost a lot.
If you choose the other way of protection, the trade secret, the advantages are that: is cheap, it is not limited in time, it doesn’t involve any registration cost, it has an immediate effect, and you don’t have to reveal anything. But the big disadvantage is that you have no legal protection against the competitors who will try to duplicate your invention. A good example of trade secret is the secret recipe of the Coca-Cola Company.
To help innovators with this difficult decision (patent or trade secret), two authors worked on the question. The results of their works are the roadmap of Daizadeh et al. (2002) and the one of Jorda (2007). So now we will compare the two models to try to determine which one of the 2 roadmaps is more accurate.
First of all, the Daizadeh’s roadmap consists of 6 different steps or questions. You can answer to these questions by YES or NO. You need to pay attention that this models leads to the three possibilities: patent, trade secret or defensive publication.
The Jorda’s work is a combination of 11 different questions divided into three parts: marketing, technical and legal. The innovators have to answer on a scale going from 1 to 10. The answers are then totalized and the strategy to adopt is defined following the total score. If the score is above 75, trade secret should be recommended and if it’s lower than 45, patenting seems then to be the best solution. At this stage, we can already say that the Jorda’s model is more sophisticated than the Daizadeh’s one. It is also more recent.
We can also notice that both years of publication are not so recent. The most recent was made in 2007 and since then the economic situation evolved.
Therefore, it must be taken into account that these 2 methods are no longer totally up to date as they don’t take into account the world evolution since 2007: the various crisis, the evolution of technologies, the geopolitical context,…
To conclude, both models can help the inventor to make his decision. The Jorda’s roadmap is more accurate due to their 11 questions in 3 fields which make them cover a bigger scope around the innovation. The Daizadeh’s model, being simpler, makes it easier to quickly get an idea about what to do.
According to me, the two roadmaps are complementary and it could be a good idea, when possible, to use both of them as this type of decision is not at all easy to make.
But be careful! It is also important to consider that these 2 models don’t take into account all the external factors and that those taken into consideration are not up to date!
Both sources offer a roadmap helping innovators to choose the most effective way to protect their innovation. The two solutions discussed in the articles are secrecy or patenting. However, Daizadeh et al. also deal with a third and more defensive option, namely the publication of the invention in technical or trade journals.
The two papers rely on several questions to… Read more
Both sources offer a roadmap helping innovators to choose the most effective way to protect their innovation. The two solutions discussed in the articles are secrecy or patenting. However, Daizadeh et al. also deal with a third and more defensive option, namely the publication of the invention in technical or trade journals.
The two papers rely on several questions to decide the best way to protect an invention. I will try to highlight the divergences and convergences between the two of them.
First, let’s have a look at the convergences. Both articles seem to agree on several points. First, an innovation that is easy to reverse engineering or to discover independently should be patented. Second, an innovation likely to be licensed should be patented. (One can note that Jorda’s article also include the likelihood of the innovation to be a commercial product as an incentive for patenting.)
Some questions, even if not explicitly the same, implicitly deal with the same matter. Some of them lead to the same conclusions but some diverge in their solutions. First, Daizadeh et al. argue that if the innovation happens to be in a new area of technology, then it should be patented. Jorda, him, deals with the concept of competitive advantage. He says that if the exclusivity on the innovation grants a competitive advantage (or if the competitor exclusivity leads to a great competitive disadvantage), then the innovation should be patented as well. One could argue that those two concepts are very linked. Indeed if your are playing in a new area of technology, then of course having the exclusivity leads to a great competitive advantage, since you are the one selling this new kind of technology. Therefore, it seems that the authors of the two articles agree on the patenting solution for this point. Secondly, Daizadeh et al. pretend that if the innovation is part of a technology area, which evolves quickly, then it should be kept secret. On the contrary, Jorda claims that the commercial significance of an innovation is likely to be limited in time, then it should be patented. One could argue that if the area evolves quickly, then the significance of the innovation in this area will be limited in time. Indeed, in a fast-changing area, improvements and innovation constantly happen. The authors of the two articles therefore seem to diverge on the solution to protect innovation for this particular point.
Finally, some aspects were only taken into account in one of the two article and represent therefore divergences. Daizadeh et al. argue that if a public disclosure is necessary, then the innovation should be patented. They also highlight the fact that if the potential market revenues are bigger than the cost associated to the patent, then the innovation should be published. As already mentioned, this option isn’t handled by Jorda’s article.
Furthermore, Jorda deals with legal questions that aren’t part of Daizadeh et al’s questionnaire. He argues that if a patent’s validity is likely to be upheld, then the innovation should be patented. He also says that if the dissemination of the innovation from within the business would be very hard to control, then the innovation should be patented as well. Besides, he argues that if it is difficult to determine if competitors are using the innovation, and therefore to charge infringement fees, then the innovation should be kept secret. Finally, he also says that if an alternatives (“design around”) to the innovation would be easily find or if its disclosure require or allow access to other unprotected data, then it should be kept secret.
To conclude, both articles seem to handle and agree on most of the marketing and technical questions, (except one). Jorda also handle legal questions that are not part of Daizadeh et al’s questionnaire.
Sources:
– Daizadeh, I., Miller, D., Glowalla, A., Leamer, M., Nandi, R., & Numark, C. (2002). A general Approach for determining when to patent, publish, or protect information as a trade secret. Nature biotechnology, 20, 1053-1054.
– Jorda, K.F., Chapter 11.5, “Trade Secrets and Trade-Secret Licensing,” Intellectual Property Management in Health and Agricultural Innovation: A Handbook of Best Practice. p.1044. 2007-2012.
In both papers, authors propose roadmaps to help inventors decide on the most effective way to protect an innovation. They can either choose to patent their innovation or keep it as a secret. We can describe a patent as a contract between the inventor and the public which stipulates that in exchange for the disclosure of their inventions, creators get… Read more
In both papers, authors propose roadmaps to help inventors decide on the most effective way to protect an innovation. They can either choose to patent their innovation or keep it as a secret. We can describe a patent as a contract between the inventor and the public which stipulates that in exchange for the disclosure of their inventions, creators get a right of protection. Secrecy means that there will be no publication of the discovery and therefore no one will have access to it. However, no rights of protection are attributed. Some enterprises may also choose to patent some sub-innovation (fragment of an innovation) and keep the rest secret.
The roadmap proposed by Daizadeh et al. also includes the possibility of printing a defensive publication which will prevent competitors to patent a similar invention. Even though Jorda only focuses on patent and secrecy, the paper takes into consideration that in some cases either approach can be followed. Both questionnaires deal with marketing, technical and legal issues.
The first roadmap proposed by Daizadeh et al. is made out of six general yes or no questions for which different answers lead to different questions which, in the end, will lead to a protection method. Similarly, the second roadmap consists of eleven questions but this time the inventor’s answer is based on a scale from 1 to 10. It is the total of each question that is, in the end interpreted. Higher “score” means that a trade-secret protection is favorable while a lower one means that patent protection would be, in this case, more advantageous. We can conclude that the latter roadmap might be more complete and precise than the first one as it includes almost twice as much questions and proposes more varied answers.
If we look more closely at both roadmaps we notice that most questions overlap one another and are rather similar. Per example both take into account the issue of reverse engineering, the rapidity at which the technology will develop, etc.
In conclusion, I think both models resemble one another and should be used alongside to obtain an answer adequate to each situation and as precise as possible.
The big question regarding IP protection is on one side, which kind of protection should be chosen and on the other side how is a decision made, or more precisely which questions has an innovator to ask him/herself?
As suggested above, there are three main options to choose from: Trade Secret, Patent or Publishing. Before comparing the two questionnaires for assessing… Read more
The big question regarding IP protection is on one side, which kind of protection should be chosen and on the other side how is a decision made, or more precisely which questions has an innovator to ask him/herself?
As suggested above, there are three main options to choose from: Trade Secret, Patent or Publishing. Before comparing the two questionnaires for assessing which kind of protection to choose, let us have a short look, what each of the three options may imply.
1) A trade secret is pretty much easy to understand. It doesn’t require any registration, does not have any time constraint and most important is not required to disclose any sort of information to the public. However, it might be not an effective tool for new innovations due to it’s difficult enforceability when it comes to court and the opportunity for competitors to discover the secret and patent it for themselves.
2) A patent owns the exact the opposite characteristics of a trade secret. This means that its huge advantage is the effectiveness against imitators and a 20-year long protection on the market, which usually is enough to benefit from it. The disadvantage is its high cost for registration and the disclosure of sensitive information to the public.
3) Publishing, is a common and rapid way of disclosing scientific knowledge to the public. It therefore prevents any possibility of patenting for competitors. When looking at the graphical roadmap above, we see only in one case that an innovation should be published. That is, when potential revenue that could be extracted from the innovation is smaller than the litigation costs of a patent.
Comparing both, the roadmap by Daizadeh et al. provides three options (trade secret, patent, publish), whereas the questionnaire differentiates only between trade secret (above 75 points), patent (below 45 points) and a mid-range, where the approach isn’t that important and the decision rather depends on its context.
Both assessments cover the main three areas (marketing, technical, legal), however weights are given differently to each part. Daizadeh et al. puts most weight on the technical analysis of the innovation (three out of six questions), followed by legal and marketing questions, respectively. Jorda distributes all eleven questions equally to each category.
In both questionnaires marketing questions target, whether information needs to be disclosed and by how much competition can take advantage of this. Regarding technical questions both address the issue of reverse engineering, but also consider the market environment. Here in my opinion taking both together, the questions complement each other pretty well. Lastly, in legal terms both ask for the willingness of licensing the innovation.
Summing up, both questionnaires deliver questions from the main three categories: marketing, technical and legal, in order to decide which IP protection to choose. They complement each other with the questions they address in each category, but show differences regarding possible outcomes and the importance of certain questions within the main three areas.
Both roadmaps are made to guide innovators to choose if the keep the secret of their innovation or if they publish their idea in a patent. Patents allow innovators to be the only users of their new technology but this is only for a time. Everybody has access to the process so once the delay is over the author is… Read more
Both roadmaps are made to guide innovators to choose if the keep the secret of their innovation or if they publish their idea in a patent. Patents allow innovators to be the only users of their new technology but this is only for a time. Everybody has access to the process so once the delay is over the author is not protected of the imitation anymore. Whereas keeping the secret does not protect inventors of imitations. However if they reach to keep it secret, their idea won’t never be imitate because nobody has a reason to discover it (no publication).
The inventors’ choice between patent and secret is so very important.
Both roadmaps offer a guide to the best choice depending to the innovation. The first one (the one in the article) starts to one point and then 6 questions are asked which the only possible answers are YES or NO. Depending to these answers a path is emerging which is leading to three solutions: defensive publication, patent or trade secret. While the second roadmap (Jorda 2007) is built like a list of 11 questions where the decision-maker notes on a scale from 1 to 10 that the proposition happens. The article’s authors offer explanations for each question. Once all the questions are answered, the decision-maker calculates the total score which will figure out if he should chose trade secret protection, patent protection or if this choice does not really matter.
According to me, the second model is more precise and adaptable to all innovations than the first one. Because they are more questions and that these questions offer more that only two radical answers (yes or no in the first roadmap). The second model allows that all innovations do not have to be protected by a patent or a secret but sometimes they do not need any protection because they just do not meet criteria. However, the roadmap in the article offers a third solution which is not suggested in the Jorda’s one: the defensive publication. Moreover, questions in this map are more related to each other and are constructed like a pad which might make sense in certain situations which are less complex.
To conclude, both roadmaps offer to inventors ways to decide how they should protect their innovations. The first roadmap (in the article) is easier and could be a good way to begin the reflection. Whereas the second roadmap is a bit more complex and complete and could be decisional.
The two roadmaps follow different approaches with many essential criterion overlapping. With the Daizadeh roadmap, one only has to answer simply yes or no questions step by step to find out the most suitable strategy. Although it is easy to operate, in my view it seems oversimplified and too absolute. While with the Jorda roadmap, one has to answer each… Read more
The two roadmaps follow different approaches with many essential criterion overlapping. With the Daizadeh roadmap, one only has to answer simply yes or no questions step by step to find out the most suitable strategy. Although it is easy to operate, in my view it seems oversimplified and too absolute. While with the Jorda roadmap, one has to answer each of the 11 question on a scale from 1 to 10 to get a total score and higher score favors trade-secret over patent. More factors are taken into consideration including the enforcement issues and factors that counterbalance each other in this roadmap (e.g. Question 5&6), which is more complete and realistic. However, I find it quite arbitrary to give the 11 questions the same weight and the score one may give to each question can be quite subjective, thus the reliability of this roadmap is in doubt.
When comparing Jorda roamap questions with the steps of Daizadeh roadmap, we can find many differences as well as many overlapping factors.
Question 1 is similar to Step 5, they both suggest, if you are potentially interested in licensing (or commercializing) the invention, patent is preferable to trade-secret.
Question 2&3 are related to Step 6. Question 2 and Step 6 both suggest patent when the commercial edge is significant enough. But when the commercial edge is not significant enough, Question 2 suggests trade secret while Step 6 suggests defensive publication to establish prior art against competitors. Meanwhile, Question 3 suggests patent publication as the defensive strategy.
Jorda argues that life span is not a particularly useful criterion (although Question 4 about life span is given the same weight as other questions, which is kind of confusing) while Step 3 suggests for technology areas that evolve quickly, secret is preferable. That is one contradiction.
Question 5 takes into account the ability to design around an invention while it is ignored in the Daizadeh roadmap.
Whether a competitor can ascertain the nature of the development from the product in Question 6 is basically the same as whether the idea is easy to reverse engineer in Step 2.
Question 7 takes into account would disclosure of the development require or permit access to other unprotectable information, while it is ignored in the Daizadeh roadmap.
Whether others could arrive at the same development independently in Question 8 is also considered in Step 2.
Question 9, 10 and 11 are about enforcement issues which are not taken into account in the Daizadeh roadmap. Question 9 is about weak patent ignored by competitors and for which the company is unwilling to sue. Question 10 is about the risk of disclosure with trade secret. Question 11 is about whether detecting infringement is difficult with patent protection. If a strategy cannot be enforced well, another strategy might be preferable.
After comparing the two roadmaps, as far as I am concerned, when choosing a strategy to protect an innovation, it is better to first examine the most crucial factors, i.e. the points where the two roadmaps overlap, then examine other factors in the Jorda roadmap that are not in the Daizadeh roadmap, such as the enforcement issues, to determine which one of the three strategies suits most.
Following WIPO’s definitions, a patent is an exclusive right granted for an invention – a product or a process – that provides a new way of doing something, or offers a new technical solution to a problem, while a trade secret is considered any confidential business information providing a competitive edge to an enterprise. As stated by Michael B. Fein… Read more
Following WIPO’s definitions, a patent is an exclusive right granted for an invention – a product or a process – that provides a new way of doing something, or offers a new technical solution to a problem, while a trade secret is considered any confidential business information providing a competitive edge to an enterprise. As stated by Michael B. Fein – Eckert Seamans Cherin & Mellott – the choice of patent vs. trade secret depends [among other factors] on likely patentability and the possibility of maintaining secrecy.
Patents usually represent a more secure method to protect intellectual property due to the existent patent law and rights. A patent gives the inventor the right to stop others from copying, manufacturing or selling the invention without permission (alternatively, the inventor may license the patent, using it as an important source of revenue), and thus it may even help to reduce competition. Hence, it is very common for inventors to use patents in the highly competitive technological sector. However, there are situations where resorting to trade secrets is the best option. To start, some inventions or manufacturing processes do not meet the patentability criteria, and thus can only be protected as trade secrets. Additionally, trade secrets have the great advantage of not being time limited, as well as having immediate effect.
The two proposed roadmaps – Daizadeh et al. (2002) and Jorda (2007) – were developed to support the decision-making process of seeking patent protection or maintaining a trade secrecy. The first model (D) proposes a 6-step approach with yes or no questions, leading to three possible solutions, i.e., instead of focusing only in the patent or trade secret outcomes, the authors suggest a defensive publication alternative. Hence, this model is a ‘simplified’ approach based on the analysis of few crucial questions. On the contrary, the second model (J) proposes an 11-question questionnaire, answered in a scale from 1 to 10, where a total summed-score below 45 favours patent protection and a score above 75 would favour trade secrecy. However, these two methods also present crucial similarities, such as the importance of how easy it is to reverse engineer, as well as the influence of time and how fast the market changes.
To conclude, taking into consideration both the differences between patent and trade-secret protection and the characteristics of the two roadmap models, it is my opinion that the most accurate method would be using a combination of both. Inventors can use the D model to benefit from the main (summarised) points to address when pursuing intellectual property protection, while complementing with a more in-depth analysis provided in the J model, thus providing the best outcome of which strategy to follow.
The goal of this comment is to compare patents versus secrecy, and two models that should allow companies to choose between the two.
First of all, let’s study the advantages of each method.
The choice would be in favour of the trade secret in at least two cases. Firstly, when the innovation does not meet the patentability criteria. In this… Read more
The goal of this comment is to compare patents versus secrecy, and two models that should allow companies to choose between the two.
First of all, let’s study the advantages of each method.
The choice would be in favour of the trade secret in at least two cases. Firstly, when the innovation does not meet the patentability criteria. In this case, the trade secret would be the only choice. Secondly, when the market moves fast, or if being first on the market gives a competitive advantage, the fact that trade secrets have immediate effect will clearly help the company. To this, we could add that trade secret protection is not limited in time, and can thus continue indefinitely, or until the secret is revealed to the public. One last advantage is that there are no prosecution costs or maintenance fees, even though it can still be expensive considering the costs necessary to protect the secret.
Companies would prefer patents in other situations. Trade secret does not protect you if another company finds the same idea by other methods, or by reverse engineering your product. This company could even then patent it. In this case, it is better to be the first to file a patent application.
However, I would like to point out that when an innovation is complex, the answer doesn’t need to be “patent all”, or “use trade secret for all”. A complex innovation is composed of several parts, and the company could choose to patent some, and to use trade secrets for the others.
Let’s move on to the two models. The first is the road map proposed by Daizadeh et al in 2002, the second is another roadmap introduced by Jorda in 2007. They have common points. Both talk about reverse engineering, time, market revenues, or equivalent, for example. However, they differ on many things. The first model is a 6-step approach, with yes or no questions, and that takes into account a third option: disclosing the idea directly to trade journals. By contrast, the second model is an 11-step approach that grades questions on a 1 to 10 scale. The second could seem best as it is more complete, and asks for more reflexion on the part of the company. It requests to scale the answer, which could help companies when the observation is more nuanced than just yes or no. However, both would be advantageous in different situation. The fist model offers a quick idea of what would be the best option for the company, while the other offers a thorough questioning and an in-depth reasoning. To use both models would allow the company to not only grasp easily the best option, but also to confirm the intuition.
In conclusion, I believe a complementary use of both models would be the best for the company, as it would fully take advantage of the models’ interests.
Both the two methods are meaningful for helping innovator to decide whether to patent a new development or keep it trade secret. J‘s(Jorda (2007)) questionnaire seems much more delicate than D’s (Daizadeh et al. (2002))roadmap, due to it has more questions and the answer for each question has ten partitions of grade against only yes or no. In order to… Read more
Both the two methods are meaningful for helping innovator to decide whether to patent a new development or keep it trade secret. J‘s(Jorda (2007)) questionnaire seems much more delicate than D’s (Daizadeh et al. (2002))roadmap, due to it has more questions and the answer for each question has ten partitions of grade against only yes or no. In order to compare the two roadmaps, more details should be pay attention to.
The two methods have some similarities. For example, step 2 in D’s “Is the idea easy to reverse engineer or discover independently?” is similar to question 6“could the product be ‘reverse engineered’?” and question 8“Is it likely others will independently arrive at the same development” in J’s, and they give the same advice. Also, step 3 in D’s is similar to question 4 in J’s, step 5 in D’s is similar to question 1 in J’s and step 1 in D’s is similar to question 10 in J’s, although the advice they give may differ in some circumstance.
However, the two methods also have differences.
First, the D’s offers a third solution to protect innovation besides keeping the innovation secret or patenting it. That is to publish a defensive publication. While the J’s only offers the latter two solutions. Considering that in real cases, it maybe not simply to choose secrecy or patent for an innovator, defensive publication is a better choice when the potential market revenues outweigh the patent and associated costs.
Second, in question 2 and 3, J’s method adds the competitive advantage and disadvantage to the decision making process, which didn’t mentioned in D’s. Competition is an important factor to be considered. It would be possible to weigh the potential benefit or loss before making a decision on whether to patent or not.
Besides, questions 9 in J’s remind a legal aspect that a weak patent should not be patented, in fact, once patented, the chance for trade-secret protection lost because publication. This is a legal aspect that didn’t proposed in D’s.
The two methods are complementary.
By comparing them, I suggest that the two methods could be used in real cases.
When an innovator considering whether to give a development patent or secrecy, the D’s methods can be used firstly to get a simple recognition as it is easy to get a result, yes or no. Then find more details in J’s and analysis them. At last, make a decision at the framework of both D’s and J’s.
In conclusion, both D’s and J’s methods are not perfect. However, use them complementarily will benefit more when making decision on patent or not.
When we think of patenting an idea and maintaining trade secrecy, we have to consider revenues and costs.The roadmaps put forward by Daizadeh at al.(2002) and Jorda (2007) do overlap and complement each other in several aspects but also have some important differences.
To begin with, analyzing the roadmap by Daizadel at al, has six steps or questions to… Read more
When we think of patenting an idea and maintaining trade secrecy, we have to consider revenues and costs.The roadmaps put forward by Daizadeh at al.(2002) and Jorda (2007) do overlap and complement each other in several aspects but also have some important differences.
To begin with, analyzing the roadmap by Daizadel at al, has six steps or questions to guide us towards an answer but interestingly the authors added a third option on top of patent and secrecy which is defensive publication. In contrast Jorda (2007) in their roadmap focuses on patent and trade secret.
The roadmap of Daizadel is easier than that of Jorda which have 11 questions and each question should be answer on a scale from 1 to10. By summing the score of each question, the innovator can get a final value which will range from 11 to 110 and different range do have different advice. Comparing it with Daizadel at al model we can conclude it is more precise because it uses mathematical approaches to give advice.
Furthermore, the roadmap of Jorda ‘s 11 questions is divided into three parts; marketing, technical and legal. Comparing the two roadmap i find out they have a similar idea on the technical aspect. Jorda (2007) takes into account many different types of innovation in the form of development. Again it adds a legal aspect in its questionaire in question 9 to 11.This helps to defend the firm’s interest.
To conclude, the two roadmaps help guide us towards the answer and its difficult to choose which one is the best since they both have their advantages and disadvantages. So in my opinion it is best to work with both roadmaps.
All choices have pros and cons in today’s world, and and nowhere is it more apparent than in the technology sector. The task of an inventor is to make easy the lives of humanity. However, it is a strenuous process, and thus the inventor needs some form of protection and returns. These can be found in the form of … Read more
All choices have pros and cons in today’s world, and and nowhere is it more apparent than in the technology sector. The task of an inventor is to make easy the lives of humanity. However, it is a strenuous process, and thus the inventor needs some form of protection and returns. These can be found in the form of patents or secrets. Boith of these have their advantages and disadvantages.
Also, the other question of where the firm should innovate in- Idea market or product market- is also extremely important.
I will examine the two models, discuss their pros and cons, contrast and their complementing properties. Then I will put forth my personal opinion in favour of one of the models
The two models are Daizadeh (2002) [M1] and Jorda (2007) [M2].
M1 asks a series of intuitive questions- six, to be precise. These questions point to several aspects of the invention, and with the appropriate responses, it is determined whether or not there should be secrecy or a patent. However, there is also a third option: Publishing. This is explained with the help of the diagram, and clearly shows that publishing is a viable option under a set of circumstances.
M2 is more recent than M1. It asks 11 questions, and each question is scored from 1-10. A score of below 45 indicates that the Patents are a better solution, and above 75 indicates that the invention should be a trade secret. The middle zone between 45-75 is a zone where either option is possible, but the ultimate decision is then with the weighing of the pros and cons of patents and trade secrets. There is no third option.
M2 is more recent, making it more relevant, but it has a caveat: there is no clear ‘Yes’ or ‘no’. Therefore, it is a bit more flexible- the final outcome is not so sure, as one question may point towards one direction may be annulled by the score of another. M2 is more precise, asking three types of questions- Technical, Legal and Marketing. The second model is more detailed than the first. M1 ends up ignoring the competition level or market positions (brands, market dominace etc). M1 also ignores the legal aspects of an invention. Unlike M2 does not offer an alternative to patents or trade secrets, which is publishing. In my opinion, having a viable alternative keeps the options open. M2 can be integrated with that choice with simply one more question.
Both models seek to facilitate the decision making process for patenting or keeping an invention a trade secret. These rules are however guidelines and hence the final decision rests with the inventor. Sometimes, keeping a trade secret is better than acquiring a patent.
In my opinion, both models are good, but Jorda (Model #2) is a better fit and more precise. The addition of a question regarding publishing can help provide an alternative and also change the scores towards, hopefully, a better option and choice.
Secrecy or patenting? All the innovators are facing this choice when they want to protect their innovations. In order to help them with this difficult decision, several authors have worked on the question. The results of their works are known as the two roadmaps of Daizadeh et al. (2002) and Jorda (2007). The purpose of this comment is to… Read more
Secrecy or patenting? All the innovators are facing this choice when they want to protect their innovations. In order to help them with this difficult decision, several authors have worked on the question. The results of their works are known as the two roadmaps of Daizadeh et al. (2002) and Jorda (2007). The purpose of this comment is to give some practical tips to help innovators to choose between the two different models.
Before saying which one of the roadmaps is more accurate, you need to know the pros and cons of secrecy and patenting. If you choose the secret way, you have no legal protection so everybody can copy your innovation. But if you are able to keep the innovation secret for a long time you might make higher profits that if you had been granted a patent. A famous example is the secret recipe of the Coca-Cola Company. This way of protection is linked with a high uncertainty; you need to take disposition to avoid that your competitors discover your innovation. For the patent, there is a legal protection but you need to reveal your innovation to everybody. The main advantage is that you will be certain to be the only one using it for twenty years. For instance the patents are used in the drugs industry.
Now, we need to spend some time to compare the two models. The first difference that we are able to notice is the date of publication. The Daizadeh’s roadmap is five years older than the Jorda’s one. But between today and the publication of the Jorda’s roadmap a lot of things have changed. The economic crisis appeared, the technology is changing faster,… You need to pay attention to all this externalities if you are wondering what is the best between secrecy and patenting. So for this first difference the Jorda’s roadmap seemed to be more accurate thanks to the fact that it was published later.
When you analyze the content of both roadmaps, another element is really different. It is the fact that Daizadeh only suggest questions with binary answers, “yes” or “no”. On his roadmap Jorda decided to ask more detailed questions with a scale that goes from one to ten as answers. The fact that you can answer with nuance is better because a lot of choices in our current world are not based on binary decisions. You need to weight pros and cons before taking a final decision. Another important factor is that Jorda covers a larger scope around the innovation because his model is based on eleven questions. That is five more than the other roadmap. So on the content too, the Jorda’s roadmap is more precise than the Daizadeh’s model.
To conclude, if you are an innovator, I will suggest you to use the Jorda’s roadmap to help you in your choice. This model looks like to be more accurate, useful and more adapted to our current environment than the other one.
The decision whether a patentable idea has to be patented or kept secret isn’t an easy one. Yet, two roadmaps have been developed in order to help managers take the right decisions. The aim of this comment is to compare those two roadmaps and highlight where they overlap, contradict and complete each other. In order to make it easier lets… Read more
The decision whether a patentable idea has to be patented or kept secret isn’t an easy one. Yet, two roadmaps have been developed in order to help managers take the right decisions. The aim of this comment is to compare those two roadmaps and highlight where they overlap, contradict and complete each other. In order to make it easier lets call the roadmap proposed by Daizadeh et al. (2002) roadmap number 1 and the one proposed by Jorda (2007) roadmap number 2.
The first roadmap consists of 6 yes or no questions leading to one of the three possible solutions (patent, trade secret or defensive publication) or to another question while the second roadmap consists of 11 questions to the which innovators have to answer on a scale going from 1 to 10. The answers are then totalised and the strategy to adopt is decided following the total score. If the score is above 75, trade secret should be recommended and if it’s fewer than 45, patenting seems to be the best solution. Also, if the total score is between 45 and 75, both strategies seem to fit and it’s not really possible to give a unique solution.
The first main difference between the two models is the fact that the first one proposes three solutions: patent, trade secret and defensive publication, while the second one only leads to a patent or a trade secret. Moreover, the first roadmap can directly lead to a strategy without having to answer all the questions while with roadmap number 2 innovators have to wait for the total score of all the questions to make a decision. This involves that the first model is easier and quicker to use but may also seems too simplistically sometimes. On the other hand, the second model may be more complete but it is also true that it is more complicated. It is not always easy to decide which mark to attribute to each question, which can lead to a certain form of subjectivity. Moreover, the second model is also a bit less radical because it may accept multiple solutions. If the total score is between 45 and 75 it admit that both solutions (patent and trade secret) could fit the situation.
Aside from the differences on the form, the two roadmaps also defer from each other on the content. For example, in roadmap number 2 there is a question about the disadvantages for a firm that would appear if one of their competitors obtains exclusivity. This point is not mentioned in the first model. That’s also the case for subjects like the competitive advantage (question 2), alternatives to the innovation (question 5), access to other unprotectable information (question 7) or the respect of the patent by the competitors (questions 9 and 11). All those subjects are addressed in the second roadmap and not in the first one. Similarly, the first model is the only one to care about the newness of the area of technology in which the innovation is developed (step 4).
However, there also exist lots of similarities between the two roadmaps. Step 5 of roadmap number 1 and question 1 of roadmap number 2 are both about the licensing opportunity. Similarly, both roadmaps also address the questions of the speed of development of the technology (step 3 and question 4) and the reverse engineering problem (step 2 and questions 6 and 8).
To conclude, we can say that those two roadmaps are pretty different even though they try to solve a same problem. Nevertheless they also are very complementary. The first one is a bit less detailed than the second one but it enables to have a more schematic view on the problem, while the second one allows to review much more aspects of the situation and have a wider approach towards it. That’s why I think that both tools should be used simultaneously.
There are discussions whether or not you should patent a product. Indeed, In addition to precise criteria that allow you to patent an innovation, there are cases where it is just not the appropriate way to manage your technology. The patent expenses can be greater than the turnover or simply, patent can expire and everyone can use your technology preventing… Read more
There are discussions whether or not you should patent a product. Indeed, In addition to precise criteria that allow you to patent an innovation, there are cases where it is just not the appropriate way to manage your technology. The patent expenses can be greater than the turnover or simply, patent can expire and everyone can use your technology preventing you from future revenues. The option that counters this second outcome is a trade-secret. But both choices have their pros and cons.
In this comment I am going to talk about two models that inform innovators whether a patent or secrecy is best for a development. The first one is the Daizadeh et al. roadmap and the second is the Jorda Roadmap. I will start by going through the characteristics of both models, explain in what way they contradict, overlap or complement each other and conclude with a personal opinion regarding the models.
The Daizadeh et al. model (2002) takes the inventor though six steps (or questions). It is important to point out that it considers a third option to patents and secrecy: publishing. The answer to the questions (yes or no) defines if one must choose to patent, keep the secret or publish its idea. There is a very intuitive roadmap in which the inventor move along those 6 steps towards a unique destination: patent, secrecy or publishing.
The Jorda model (2007) is more recent. It asks 11 questions to the innovator. The answers have different scores, 1 to 10, and a total score is computed at the end of the questionnaire. People with lower scores (below 45) are advised to patent and ones with higher scores are told to go for a trade secret protection. There is a tampon zone between 45 and 75 where it doesn’t matter which one you choose but must take into consideration whether it is a process (secrecy is better) or a product (patent is better).
The first thing to notice is that the second model came out 5 years later which means that it should be more relevant. Moreover, the latter is based on a score not on radical answers such as Yes or No. It makes the final judgment more flexible. It means that even if one parameter suggests it should be one way, other questions can balance the score and thus reverse the final outcome. Also, the second model is more precise since it offers three range of questions: marketing, technical and legal. Indeed, It seems that the newer model focus on more details than the first one. The first model ignores external factors such as competition level or market position (brand awareness, market shares …) whereas the second one focuses its first questions on marketing aspects. Plus, the legal aspect is non-existing in the first model whereas questions 9-11 deal with that matter in the second model. Finally, the second model doesn’t offer the choice of publishing which is in my opinion a good idea. However model 2 includes that choice with only one question that can be easily added to the second model
All in all, both models are there to facilitate a decision to patent or keep the development secret but they must only be taken as advice not as non-bending rules. The perfect counter example stated in an article is coca cola. A low score at the first commercial question (second model) should have made them patent their recipe but the secret here was obviously the best option. So yes, both models have valid points but they are simplified. In my opinion the second model in more precise for the reasons I stated previously especially if an extra question is added regarding a publishing.
It seems that the choice between Secrecy and Patent has always been tough. Patent is a really good way to reward the inventors for disclosing their inventions. A patent is a legal right of exclusion so the patent holder can prevent others from commercially use the patented innovation. The exclusivity enables higher returns on investment. Moreover, you can make the… Read more
It seems that the choice between Secrecy and Patent has always been tough. Patent is a really good way to reward the inventors for disclosing their inventions. A patent is a legal right of exclusion so the patent holder can prevent others from commercially use the patented innovation. The exclusivity enables higher returns on investment. Moreover, you can make the invention tradable. It means that you can license your patent to others. There are many disadvantages with the patent; you have to reveal your invention, patent an innovation can be very expensive, and it takes a lot of time for a patent to be granted. So sometimes, trades secrets are more likely to be used. Why? Simply because it’s cheap and you don’t have to reveal anything. Also, if the market moves really fast, you will probably not have time to wait for the patent to be granted. Obviously, trade secrets can also have disadvantages ; you have zero protection against the competitors who will try to duplicate your invention and secrets leak quite often There is another solution which consists in a more defensive strategy. Indeed, the inventors can also choose to publish inventions, this would prevent the others from patent an innovation and so prevent them to claim on a piece of property right..
In the end, it appears that it is quite complicated to figure out what to do when it comes to innovation protection. Trade Secrets, Patents and Defensive Strategy have pro’s and con’s. That’s why, in my view, the roadmaps of Daizadeh’s and Jorda can be really helpful. But a comparison has to be made between those two charts.
Here, we face two roadmaps that are quite different. In 2002, Daizadeh et al. established a six questions roadmap that can be represented as a graph. Basically, the idea is simply to answer each roadmap’s questions by Yes or No to know whether you have to use patent, secrecy or publishing strategy. In 2007, Jorda designed a roadmap which contains 11 questions. To answer those questions, you have a scale going from 1 to 10. In my opinion, the roadmap of Jorda seems to be more complete as it contains more steps. Moreover, to answer the Jorda Roadmap’s questions, you have to give a weight to your answer, you have a scale. This roadmap goes deeper into the reasoning, it is not all black or all white. In the roadmap of Daizadeh, you can only answer the questions by “yes” or “no”, it is binary. But sometimes, you may not know or not be sure what is going to happen so it can difficult to answer the questions. We can also note that Jorda’s work include a legal aspect, which can be really decisive in the final choice for patent or secrecy and which was not took into account in the Daizadeh’s Roadmap. However, we must be careful when making a comparison between those two works. Indeed, Daizadeh’s work allows inventors to choose between Trade secret, patent and Defensive publication but in Jorda’s work, the Defensive publication has not been taken into account.
I think those two roadmaps were carried out for the same purpose, so it is quite difficult to choose which one to use. Indeed, on the one hand, Jorda’s work is more complete but on the other hand, Daizadeh’s work allow us to decide whether you use patent or secrecy more rapidly. For example, if you are sure that the public disclosure of your invention is necessary and that the potential revenue is greater than the cost of IP processing and litigation, then in only two questions, you know you have to patent the innovation. It enables you to spare some extra costs due to extra research carried out to find out what to do with the invention.
To conclude, I would say that the two roadmaps can be quite helpful regarding the decision of how to protect the innovations but I must confess that I am a bit perplex because I don’t think that the roadmaps cover every situations. I think the two roadmaps are quite complementary and therefore that inventors should use them in parallel.
In this comment, I will compare two models build to decide the most effective way to protect an innovation. According to these roadmaps, three ways exist to protect this innovation : trade secret protection, patent protection and defensive publication.
What are their differences? The first difference between these models is the number of questions they contain. Indeed in the first… Read more
In this comment, I will compare two models build to decide the most effective way to protect an innovation. According to these roadmaps, three ways exist to protect this innovation : trade secret protection, patent protection and defensive publication.
What are their differences? The first difference between these models is the number of questions they contain. Indeed in the first one, the model consists on 6 questions while the second one contain 11 questions. Secondly, another difference, that is probably the most important, is the way of evaluating each question. Indeed in the first model, questions are answered by « yes » or « no » while in the second model questions are answered on a scale from 1 to 10. Thirdly, there’s a difference between the number of possibilities resulting from the model. In fact, it exists in the first one a third way to protect idea (defensive publication).
Concerning their overlapping, both of these frameworks are a guide for companies. Moreover, they include marketing and technical questions. Indeed step 1 corresponds to question 7, step 2 corresponds to question 6 and step 6 corresponds to question 2 even if questions are more accurate in the second model. However, Jorda’s model includes some legal questions (9-11) that are not present in Daizadeh model. It’s one of the reason why this model is more accurate.
To sum up, we can say that the first model is simpler, quicker but less detailed. However in my opinion, both models should be used complementarily. A proof is the following example: If a company used Jorda’s model and found a score between 45 and 75, Daizadeh model could be helpful to determine the protection to chose.
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Quentin Gilbert
The goal here is to compare two models and to see in what extent they overlap, they contradict or they complement each other. With a patentable idea, innovators have to choose a strategy in order to protect their idea from exploitation of competitors. Intellectual property rights help innovators to have the right incentive to innovate and to recover their costs.… Read more
The goal here is to compare two models and to see in what extent they overlap, they contradict or they complement each other. With a patentable idea, innovators have to choose a strategy in order to protect their idea from exploitation of competitors. Intellectual property rights help innovators to have the right incentive to innovate and to recover their costs. Several IPR exist but the roadmap proposed by Daizadeh and al. (2002) focuses only on three strategies which are patent, trade secret and defensive publication while the roadmap by Jorda (2007) helps to choose between patent and secrecy. The choice of the strategy that innovators will follow is capital for their future returns on investment. If they make a wrong choice, competitors could take advantage of the situation and exploit the idea. Daizadeh and Jorda developed roadmaps to help innovators in their strategy’s choice.
To make it easier, I will call the Daizadeh roadmap “model 1” while referring the Jorda roadmap as “model 2”. The intention is now to compare the two models to see how they differ one to the other.
First, we can notice that the model 1 proposes a third strategy which is defensive publication while model 2 only focuses on the two options: patent or trade secret. Defensive publication (also called defensive disclosure) prevents competitors from getting a patent on the invention. When the idea is disclosed, it becomes part of the public domain and is considered as prior art. This strategy is usually chosen when innovators do not want to bear the costs of a patent. Indeed, patent fees can be large and innovators prefer to disclosure their innovation before competitors copy the idea. Model 2 does not take this strategy into consideration.
Secondly, Model 1 proposes six steps. Each step is a yes or no question and the innovator is conducted to the most suitable strategy considering his answers. The questions cover different areas which are important in the IPR field. First, if public disclosure is necessary, trade secret is directly excluded from the strategies. It is obviously impossible to keep the patentable idea secret if we disclose it. Reverse engineering follows the same idea in the way that if the invention is easy to reverse engineer, trade secret is not a viable option. At the opposite, if the technology changes quickly, trade secret could be a good choice because the competitors will not have the time to copy your idea. Patent takes time while secrecy does not. If the area of technology in which the innovation takes place is new, patent is the best strategy. The opportunity of licensing the innovation should be taken into account in the strategy’s choice. Licensing the invention can be interesting for the innovators. Lastly, if the expected revenues do not outweigh the patent costs, defensive publication seems to be the best option for the innovators’ idea.
While Model 1 is a six steps model, Model 2 is an evaluation questionnaire including eleven questions about different areas. The method is different in the sense that each answer is on a scale from 1 to 10 then the responses are sum up which gives a total number that range between 11 and 110. If the sum approaches the higher end of the scale (above 75), trade-secret protection would seem favorable; a sum at the lower end (below 45) would suggest that patent protection would be more advantageous. We find here some fields from Model 1. Indeed, licensing, new technology, reverse engineering and disclosure (question 1, 3, 4, 6, 8, 10) are both present in Model 1 and 2. However, some questions from Model 2 are not present in Model 1; design around, chances of patent’s validity or the difficulties to know if competitors are using the development inter alia.
In conclusion, we can say that the models have similarities and differences. Nonetheless, the two roadmaps have the similar goal of helping an innovator choosing the best strategy for his patentable idea. One of the main differences is the third option proposed by the first Model 1, defensive publication which is totally absent in Model 2. The first model is easy to conduct with yes or no question but there are more details and more subjects in the second model. The two models are valid ones and could be use simultaneously in order to compare the two outcomes and thus be sure of the strategy to follow.
The aim of this comment is to compare two models: Daizadeh et Al’s model (model 1) and Jorda’s model (model 2). Both models are used to determine whether it’s more appropriate to patent an innovation or to keep it secret with a trade secret.
First of all, there is a difference between the evaluations methods of the two models. In… Read more
The aim of this comment is to compare two models: Daizadeh et Al’s model (model 1) and Jorda’s model (model 2). Both models are used to determine whether it’s more appropriate to patent an innovation or to keep it secret with a trade secret.
First of all, there is a difference between the evaluations methods of the two models. In model 1, questions are only answered by “yes” or “no” whereas questions in model 2 are noted between 1 and 10 according to their likelihood. Model 1 is easy to use, understandable but maybe too radical. Indeed, this model is too simple and has a lack of nuances to be perfectly accurate. Model 2 is more precise, but grading something from 1 to 10 can be quite difficult, as you don’t exactly see the difference between each note.
Secondly, model 1 is a lot more direct and quick than model 2. Indeed, we can see that in model 1 one of the strategies (patent, trade secret, publishing the development) can be “forgotten” after only one question. In model 2, the result is only known at the end of the eleven questions. This model takes into account all the details and characteristics of the development that could have an impact on the result we would have had with other questions.
Thirdly, even if the two models present many differences, they also have similarities.
– Some questions are quite similar such as “Is the idea easy to reverse engineer or discover independently?” and “Can the nature of development be ascertained from commercial product (could the product be “reverse engineered”)?”
– The third question of model 2 is not mentioned in model 1 but I think that it can be compared to the sixth step of model 1.
– The first and fourth questions of model 2 are very similar to respectively the fifth and the third steps of model 1. It is the same for question 6 and 8 similar to step 2 and question 10 to step 1.
– The forth step of model 1 is not mentioned in model 2 whereas questions 2,5,7,9 and 11 from model 2 are not mentioned in model 1.
As a conclusion, we have observed that the models have differences and similarities, which is why I believe that they should be used complementarily. They are not deterministic and should be used carefully, but they give a really good idea of the best strategy to adopt to have an competitive advantage.
The aim of this comment is to compare two models: Daizadeh & Al’s model (called first model) and Jorda’s model (called second model) which allow an innovator to decide whether to patent its innovation or to keep it a secret under a trade secret.
First of all, it is easy to note that defensive… Read more
The aim of this comment is to compare two models: Daizadeh & Al’s model (called first model) and Jorda’s model (called second model) which allow an innovator to decide whether to patent its innovation or to keep it a secret under a trade secret.
First of all, it is easy to note that defensive publication has not been taken into account by the second model. The later only allows an inventor to decide whether a patent or trade secret would be best for its “development”.
Secondly, as for other differing aspects of the two models, we can see that the first one is a lot more direct than the second one. Indeed, in the first model, one of the options of the innovator (patent, trade secret or publishing the development) can be pushed aside after only one question. In the second model, the result is only known at the very end. Indeed it takes into account some counterbalancing characteristics of the development that could question the results that we could have obtained through an other question. For an example of that, we can look at question 5 and 6 which are: “Is it likely one could design around the development?” and “can the nature of development be ascertained form commercial product (be reverse engineered)?”. Question 5 stipulates that if it is easy for imitators to go around a patent, then this patent looses its value and therefore the innovation should be kept secret instead of patented. But question 6 points out that you should also pay attention to the fact that if the development can be found by competitors by reverse engineering, even if the patent of the innovation could be avoided by competitors, it won’t be very useful either to get it protected by a trade secret.
Thirdly, here are some other additional discontinuities between the two models:
– The second model takes into account the fact that the type of development that we are considering may induce the choice of one or the other solution. For instance, the optimal choice for a product is more likely to patent it and for a process you might be better off by keeping it secret. However, this point is, in my opinion, to a certain extent, present in the question “is the idea easy to reverse engineer or discover independently? ». Indeed, a process is less likely to be reverse engineered than a product.
– The third question of the second model, which is “how much of a competitive disadvantage would it be if a competitor obtained exclusivity?”, is not mentioned in the first model. But we could argue that it could be associated to its 6th step. Indeed, if the aim of the innovator is to prevent the competitor from getting the exclusivity on the innovation, then it may be better to publish the innovation, preventing thanks to that the competitor from patenting it. This option permits to save the costs induced during the patenting process.
– Questions 2, 5, 7, 9 and 11 of the second model are not taken into account in the first model.
– The 4th step of the first model is not mentioned in the second one.
Next, while the second model is slightly more complete than the first one, I also picked out many similarities between the two models: Question 1 of the second model is similar to step 5 of the first one, as well as question 4 to the step 3 (yet they do no imply the same result in the two models), question 6 and 8 to step 2 and question 10 to step 1.
As a conclusion, we can see that the two models have similarities and differences. While I find the second model more useful, the first model also has a point, especially through its publishing alternative.
The objective here is to compare two models of roadmaps proposed to decide how to protect an intellectual property through several questions. The choice of protection is between trade secret and patent.
Although we know this choice is a complex issue, these two authors proposed their model to help innovator to protect their IP.
For easier notation, let’s call Daizadeh & Al’s… Read more
The objective here is to compare two models of roadmaps proposed to decide how to protect an intellectual property through several questions. The choice of protection is between trade secret and patent.
Although we know this choice is a complex issue, these two authors proposed their model to help innovator to protect their IP.
For easier notation, let’s call Daizadeh & Al’s model M1, and Jorda’s model M2.
First of all, the main difference between these two models is located in their evaluation. In deed, in M1 the questions are answered through “yes” or “no”. As oppose to M2 where questions are answered through a ranking from 1 to 10.
M1’s evaluation is very simple, comprehensive and leads to a perfect understandable. The issues are: it lacks of accuracy and maybe seems too simple to be true, nothing is black or white, and there should be a middle phase.
As for M2’s evaluation, the ranking is a clever alternative to the “yes” or “no” version, allowing you to be more complete and accurate. However, answering a question by 1 to 10, is always quite confusing, explanation for EVERY number should be add (5: I don’t know)
Secondly, another noticeable dissimilarity is the number of questions.
M1 has 6 steps as oppose to M2, which has 11.
Clearly, 11 questions seem more specified and complete than 6. Moreover, the M2’s questions are deeper than M1. Threatening M1’s legitimacy.
The difference might come from the fact that M2 seems to have split general question from M1 into more specific questions
Furthermore, M1 seems to give directly an answer considering patenting or not in just 2 questions while M2 will make you go through all the questions, wasting time. M1 is a good model to give you a quick and straight answer while M2 will take consideration all details and then indicate you the way to protect your IP.
Regarding the similarities, both models provide an answer about IP.
Besides they raise occasionally the same questions.
About overlapping, we can find this effect concerning the public disclosure question. While M1 asks very simply if it is needed, M2 asks about the disclosure of unprotected information,
Besides, M1 and M2 patterns suggest patent protection if these following elements threaten the innovation: reverse engineered, discovered independently or subject of licensing.
Last but the not least, a difference can be found in the answers influenced by length-duration.
In deed, while M2 propose the trade secret approach for a short life span, M1 will strive for a patenting approach.
Concluding, the M1 and M2 roadmap should be use complementary due to their advantage and disadvantage.
Combining both models should provide a good, accurate and trustworthy answer.
Converting these two patterns into one would provide an excellent evaluation concerning the IP protection management.
The question of protection of intellectual property ends up being incredibly important, since the right/wrong decision can make/break an idea, product, or in some cases even a business. Therefore, it ends up being important to have some sort of way to support these decisions, and that is where these models come into play.
While the decision to either go for a… Read more
The question of protection of intellectual property ends up being incredibly important, since the right/wrong decision can make/break an idea, product, or in some cases even a business. Therefore, it ends up being important to have some sort of way to support these decisions, and that is where these models come into play.
While the decision to either go for a patent or to try keeping the secret is the object of both models, there are still some key differences.
However, instead of just comparing models in their sections, and what they take into consideration, I would like to focus my comment on what I believe to be the key issue, and effectively the most difficult question to answer in this whole process, which is: “How likely is it that someone spontaneously invents/develops what I just developed” (to make it clear, I mean as a coincidence, and absolutely not through reverse engineering). I believe this is the key issue, since it is much harder to estimate than other factors upon a certain invention. It is relatively easy to know in what industry the invention is in, or even what the degree of public exposure or reverse engineering possible. However, it is much harder to truly estimate if someone else is even “studying” the same thing as us, let alone reach the same conclusions. There is a fine line between a moment of brilliance and the logic conclusion to a systematic research, so how do both models take it into consideration?
While both models take this particular concern into consideration, there is a completely different way to approach it. The biggest difference being that while one model takes binary decisions in several steps to reach a conclusion, the other takes a sort of average between some key questions. Let’s take a look at the problems with both, taking into account this problem of uncertainty over just what the market might produce related to our invention:
I would first like to approach the Jorda model, that approaches this problem in a quite direct way. Indeed, question 8 asks “Is it likely that others will independently arrive at the same development?”. In a very comprehensive fashion, the questions allows you to score it from a 1 to 10, based on the perceived likelihood of someone finding exactly the same conclusion as us. Now, I don’t see much of a problem with perceived likelihood (since we can’t look into others’ labs, this is the best piece of data we can get). However, the fact that in the conclusion of the model, this question counts as any other presents, in my opinion, a limitation, since this can be THE key issue when going for a patent. The fact of the matter is that there might be some weighing left to be done with the score of each question, in order for the model to be better suited for each market. It doesn’t seem balanced that the final score will take every question equally, when some can be so much more important than others (obviously, which ones depend mostly on the industry that one is analysing).
In the Daizadeh model, this issue is not taken directly into consideration, with some similarities being found in 2 of its Yes or No questions. Indeed, this model chooses to give up our own perception on how likely it is for someone to reach the same conclusion, and chooses to ask the more generalist questions of “Technology changing rapidly?” and “New are of technology?”. Indeed, the biggest limitation of this model ends up being the absolute answer that you must have, since a feeling of uncertainty about one single question (if you feel that something has a 50/50 chance of happening, it affects the whole model). Indeed, if you make a breakthrough in an stagnant but established market (in the case of “no” to both questions), the model fails to take into account any possibility of someone arriving at the same conclusion as you.
In this point that I consider so important, both models might present limitations in certain situations, which leads me to a conclusion that could be applied to most models. In the end, these are models, and therefore simplifications of reality. Therefore, no absolute answer can be extracted. It is important to use more than one tool (models), in order to better ponder your decision. As well, it is important to see the limitations of each model, specially when applied to former cases inside the industry. How would decisive cases in the past would have acted if they followed the model? What can you take into consideration that they didn’t? How can you build upon the model by asking yourself more relevant questions, that can better suit your situation? These are questions that any inventor/entrepreneur should use to complement all the limited, but very valuable information that the models provide.
Both the above mentioned approaches differ in a sense that Jordo's approach take an exhaustive view of the whole picture and consider most of the variables in a single bucket, i.e., to come to a final decision, it is considering all the parameters that (as per Jordo) should be considered to make a decision. On the other hand, Daizadeh et.… Read more
Both the above mentioned approaches differ in a sense that Jordo’s approach take an exhaustive view of the whole picture and consider most of the variables in a single bucket, i.e., to come to a final decision, it is considering all the parameters that (as per Jordo) should be considered to make a decision. On the other hand, Daizadeh et. al’s approach takes a step by step approach which may overlook a few parameters in certain cases.
For e.g. Daizadeh et. al’s approach doesn’t take care of the competitive advantage as Jordo’s approach does. Hence it won’t be able to consider the potential losses that one may run into had he/she not considered competitor’s move. It also has missed on the legal issues that may be related to the patenting.
Jordo’s approach seems to have segregated the whole concept of patenting under three heads – marketing, technical and legal. It has considered various aspects of these heads properly. Having considered them on a likert scale makes the final decision comprehensive. It also considers the different weightage assigned to different parameters in the approach.
However, Jordo’s approach may produce wrong results in a few cases and may waste time collecting data. For example, in case where public disclosure is mandatory Daizadeh et. al’s approach will give the final result in just 2 steps. However, Jordo’s will take 10 steps to get to the same, and at times it may even give the wrong results.
Hence, both the approaches can give good results and work better depending upon the situations they are applied in.
Nowadays, firms face a problem regarding the choice of protecting inventions with a patent or a trade secret. Due to this dilemma, there are two proposed roadmaps (the framework proposed by Daizadeh et al. and the one advanced by Jorda) that have the objective to give pratical guides about how innovators should choose between patents or secrecy. I am going… Read more
Nowadays, firms face a problem regarding the choice of protecting inventions with a patent or a trade secret. Due to this dilemma, there are two proposed roadmaps (the framework proposed by Daizadeh et al. and the one advanced by Jorda) that have the objective to give pratical guides about how innovators should choose between patents or secrecy. I am going to compare (pointing their contradictions and similarities) the two frameworks that can help companies when choosing between patents or secret trades.
The roadmap suggested by Daizadeh et al. introduces a third way of protecting innovations: the defensive publication. Enterprises can apply this strategy by publishing inventions in technical or trade journals so that competitors won’t be able to patent any identical idea.
When comparing the two approaches, all of us can notice that the answers we must give in the Jorda’s framework are more complex (graded 1 to 10 against yes or no answers in the Daizadeh et al. roadmap).
We can assume that Jorda’s work was based on the previous roadmap proposed by Daizadeh et al. because it’s more recent. Futhermore, Jorda’s approach seems to be more real by the fact that in some situations it assumes the best strategy can be mixing secrets and patents.
Concluing, we can say that both of frameworks have the same goal which is helping companies with the protection of innovations. However, in my opinion, the roadmap proposed by Jorda in more closed to reality. To sum up, I think that, when choosing the way to protect innovations, both of frameworks should be used complementarily.
The two models overlap each other because of the fact that both of them try to help companies to decide if it is better for them concerning a innovation to patent or trade-secrecy. The first one, the Daizadeh (2002) model is composed by six steps/questions and each question could be answered by yes or no. The second one, the Jorda… Read more
The two models overlap each other because of the fact that both of them try to help companies to decide if it is better for them concerning a innovation to patent or trade-secrecy. The first one, the Daizadeh (2002) model is composed by six steps/questions and each question could be answered by yes or no. The second one, the Jorda (2007) model is composed of eleven questions and for each of them it is possible to give a score from one to ten.
Despite the fact they both are a guide for companies, they have some differencies.
The Daizadeh model doesn’t offer many nuanced, at the end of the path it’s patent, trade-secrecy or defensive publication…It’s black or white. In the Jorda model, at the end of the questions there is a grade from 10 to 110, which offer 100 grades of grey. It’s quite more nuanced. Moreover, in the Daizadeh model each step must be followed in a specific order, on the contrary in the Jorda model each questions could be answered firstly or at the end. The models are also different in their structure, in the first one there is six steps, in the second one there is eleven questions distributed in three categories (marketing, technical and legal). An other difference is that in the first model, there is three possibilities ( patent, trade-secrecy and defensive publication), in the second model there is two possibilities (patent or trade-secrecy) with a grey zone within the answer is not clear and may depend of differents factors.
However these differencies, there is also some common points. As I already said, the aim of the models but also some questions are quite the same, for example: “Is the idea easy to reverse engineer or discover independently?” and “Can the nature of development be ascertained from commercial product (could the product be “reverse engineered”)?”
From a critic point of view these two models are quite restrictive and simple which strenghens my idea about the complementarity of thes two models. Indeed, I thing it’s better to use two different theories to make an important choice like how protect our development. The Daizadeh model could be used if a company had a score included between 45 to 75 and help the company to choose one of the two solution proposed by Jorda or even guides the company towards the third solution (the defensive publication).
As a conclusion, I would say that the two model through their differencies and their similarities are quite complementary. Jorda has maybe improve the Daizadeh model in some aspects but he didn’t obsoleted. These models should not be used in a too predictory way because these models are quite un-specific.
The main common thing between the two roadmaps are the fact that they are trying to help people to choose between patents or trade secrets. They offer different questions related to the kind of innovations and based on that, they guide you to choose the best option. But most of the time, especially for complex innovations, patents and trade secrets… Read more
The main common thing between the two roadmaps are the fact that they are trying to help people to choose between patents or trade secrets. They offer different questions related to the kind of innovations and based on that, they guide you to choose the best option. But most of the time, especially for complex innovations, patents and trade secrets are mixed. As we can see in the text “Mixing patents and trade secrets for complex innovations” (Paul Belflamme, 2013), it is possible to patent each sub-innovation and to keep some of them secret, a lot of famous examples can prove it. To be patented, an innovation need to be of practical use and to show an element of novelty. The rules related to this are now softer so trade secrets can later become patentable.
First of all, in the roadmap of Daizadeh et al. (2002), innovators only have to answer the questions by “yes” or “no”. It can be an advantage as it is very simple to answer them and so you get quickly your answer. A disadvantage is that you only have a few questions what leads to less accuracy.
Secondly, in the roadmap of Jorda (2007), the questions are asked in a completely different way. When answering the questions, you have to choose between 1 to 10. So, at the end of the eleven questions, you get a total score and depending on this score, they advise you to choose patents or trade secrets. This approach is quite complete because you can measure the degree of your answer. It’s not just black or white as in Daizadeh’s model.
Now, if we want to compare both models, we can find some similarities as well as some differences. To begin with the similarities, the question 6 (Jorda’s model) and the step 2 (Daizadeh’s model) speak about the same subject: “Could the product be reverse engineered” and they give the same advice. We can also compare the question 1 with the step 5 and see that they address the same topic: “licensing”. They agree on the answer that if licensing seemed to be an option it would be better to patent it, but in the Jorda’s model, they give a nuance while giving some examples that succeed with trade secrets. Another difference is that the Daizadeh’s model mention defensive publication whereas Jorda’s model doesn’t.
To conclude, I would say that both roadmaps can be useful but that Jorda’s model is a bit more accurate. And also that the solution is not always to choose between both but maybe to mix them.
Both the authors have presented their arguments on IP protection categories in a very interesting and simplified manner. The models given by Jorda and Daizadeh et. al are very different in their own right and complement each other well, overlapping in some regards.
At a very basic level, Daizadeh et. al.'s questionnaire seems very straightforward - 6 questions with binary responses… Read more
Both the authors have presented their arguments on IP protection categories in a very interesting and simplified manner. The models given by Jorda and Daizadeh et. al are very different in their own right and complement each other well, overlapping in some regards.
At a very basic level, Daizadeh et. al.’s questionnaire seems very straightforward – 6 questions with binary responses which help you to choose the kind of IP protection you want. He seems to pick up on the most relevant characteristics of each category, for example, Easy to reverse engineer or not, public disclosure required or not. These binary decisions lead to elimination of options and consequently to the right choice. Apart from this, he also recognizes the real world situation of IP protection – by introducing a question which considers financial prudence as well by introducing a third option of a defensive publication and thereby preventing too high investments into what could be a NPV negative investment in patent costs.
Jorda’s questionnaire on the other hand, focuses on various areas of development,and is more comprehensive. It also includes questions which are more rounded, focusing on things that a decision maker will ponder on and gives relatively more leeway by allowing a grading on a 10 point scale. In some ways, it includes some questions which a decision maker should think about even while answering Daizedah et al’s questionnaire and thus seems a more comprehensive version. However, in terms of actual decisions, it has a grey area in between – scores in the middle of the range do not correspond to any definite solution. Also, it opts to look at some real world problems like how easy it is to prevent dissemination of information which would be prohibitive for a following a trade secret approach or how much protection would patents offer in terms of claims and their validity in court which if less, would obviously work against a ‘patenting’ approach. In this way, I feel that Jorda’s questionnaire seems to follow the real world more closely where it is not able to assign specific outcomes on the basis of some questions and you need to think of a much wider scope including competitor behaviors and reactions, something inherent to a multi-player, multi turn environment.
Overall, to sum up, I feel that both the models are simple and easy to follow and cover a lot of areas which one needs to think about while deciding the type of IP protection he/she wants. However, one can gain the most by adopting or at least considering both the models together in unison as both the models have certain nuances which the other one fails to incorporate.
A straightforward difference between the two models is that the first one (proposed by Daizadeh et al) regards the possible answer to the question as dual. It can be either “yes” or “no”, it is not possible to have an intermediate position. This raises immediately some scepticism since on knows that the relality is far from being either white or… Read more
A straightforward difference between the two models is that the first one (proposed by Daizadeh et al) regards the possible answer to the question as dual. It can be either “yes” or “no”, it is not possible to have an intermediate position. This raises immediately some scepticism since on knows that the relality is far from being either white or black. Jorday, in his roadmap allows for more flexibility. For each question, the answer can be scaled from 1 to 10, depending on the location between two extreme situations.
The possible conclusions are different. The first model can lead to three different strategies, namely: secret, patent or publication. The second model ignores the defensive publication strategy but allow for a situation where it doesn’t really matter which approach is followed initially (when the total values is in the middle range 45–75).
In addition, in the first model, there is a path to follow, with the answer to one single question might provide to lead to a strategy (for example, as soon as “yes” is stated for the first question, following the model, there is no way that the path will lead to “trade secret”). For the second roadmap, it is not possible that the answer to a single question provide from attaining certain strategies. Indeed, the first threshold is at 45, and therefore, to go over this, the answer to several questions is needed. This seems more reasonable because it balanced the different aspects while the first model can over-emphasis a single aspect.
About the content of the questions, it seems that in the first model, step 1 and 2 correspond respectively to question 7 and 6 of the second model.
The step 6 of the first model can be considerate as integrating both question 2 and 9. Indeed, the question 2 refers to the comparative advantage of a patent and question 9 refers to the difficulty to get the patent includes the money value (cost) and not just the likelihood to have it.
For the step 7, at first sight, the question seemed to me irrelevant as this question seems as simple as asking directly the conclusion. However if we include in the reflection the likelihood to actually get the patent, then this question is in line with the question 9 in the second model. And this seems more pertinent, as I do not believe that someone not potentially interested in licensing the invention would care about this roadmap.
The evolution of the technology seems approached in two different manners. In the first model, the speed of evolution is in favor of trade secret as a the patent procedure could take too much time or it could be useless to hold a patent over a long period. However, in the second model, in question 4, a commercial development limited in the time is associated with patent. Here the emphasis is not on the technology itself anymore but rather on the commercial aspect.
A final personal note is that in the two roadmaps, the questions are extremely large. It seems that in order to be able to answer to those questions, en incredible large amount of information need to be taken into account.
This week, I will compare two different roadmaps in order to find contradictions, similarities and complements. The main goal of those roadmaps is clear: « How to choose between one of the two strategies, patent or secrecy ? »
The first one is the Daizadeh’s roadmap which develop a 6-step approach while Jorda’s roadmap proposes 11 questions including a… Read more
This week, I will compare two different roadmaps in order to find contradictions, similarities and complements. The main goal of those roadmaps is clear: « How to choose between one of the two strategies, patent or secrecy ? »
The first one is the Daizadeh’s roadmap which develop a 6-step approach while Jorda’s roadmap proposes 11 questions including a scale from 1 until 10 for each question.
First of all at the first sight, the 6-step procedure seems more basic and intuitive because we found less details than in the other roadmap. Moreover, the 11 questions are arrenged by categories (marketing, technical and legal), which seems more precise and « professional ».
Regarding the legal aspect, the Daizadeh’s roadmap doesn’t mention it. This theory has a big lack compared to the other because it’s an essential point if you want to choose between a patent or a secrecy.
Finally, I will say that the big difference between the two models is the structure which could be really important to « attract the eye ».
The 6-step is more clear with the roadmap described by a graph. I think it’s just enough but well detailled. On the other side, the Jorda’s model is more like a survey which could be difficulter to read and understand.
First of all, the two approaches try to explain why some firms choose to patent their innovation while others choose to hide it considering three aspects: economic/commercial, technological and legal. But there are differences between the importances accorded to each of them.
In the roadmap proposed by Daizadeh et al.(2002) the technological aspect is one of the most important , half… Read more
First of all, the two approaches try to explain why some firms choose to patent their innovation while others choose to hide it considering three aspects: economic/commercial, technological and legal. But there are differences between the importances accorded to each of them.
In the roadmap proposed by Daizadeh et al.(2002) the technological aspect is one of the most important , half of the steps are related to it . The economic/commercial and legal considerations seem being more relevant at the end of the decision process.
Unlike Daizadeh, in Jorda (2007) questionnaire the economic, technological and legal questions are equal represented.
Second, for Daizadeh et al.(2002) the beginning of the decision is related to the necessity of make the disclosure public but in Jorda (2007) the question is about the consequences of making disclosure public over unprotectable information.
Finally, Daizadeh et al.(2002) propose three options: trade secret, patent and defensive publication. The last one seems to be a choice that only a few inventors can take for instances technologist. Meanwhile, Jorda (2007) on the basis of the information gathered, it can be concluded that trade secrets and patents used side by side can have clear positive effects on the innovation sector.
The frameworks proposed by Daizadeh et al. (2002) and Jorda (2007) are similar in a way that both can be used to help the decision making when managing the protection of the innovation process. I will compare both approaches by three different perspectives (also informally suggested by Jorda (2007)), being marketing, technical and legal views.
The marketing perspective relates to the… Read more
The frameworks proposed by Daizadeh et al. (2002) and Jorda (2007) are similar in a way that both can be used to help the decision making when managing the protection of the innovation process. I will compare both approaches by three different perspectives (also informally suggested by Jorda (2007)), being marketing, technical and legal views.
The marketing perspective relates to the way the new idea will get to the market. Both authors analyse whether the company is expecting to enter the “market of ideas”, where patenting is generally preferable, or to commercialise the invention, where patenting and secrecy are valid options depending on other variables. Jorda (2007) goes deeper into this topic and analyses the competitive advantage that is provided by licensing the idea and the disadvantage if the competitor does it in first place. I think this question is especially important because it relates to the value (economic and strategic) of the innovation itself for the company.
Looking through the technical perspective we found the most common points between the two articles. The importance of how the external environment is changing is mentioned in both approaches. A faster velocity in technical changes promotes a more licensing methodology, since it would ease workaround possibilities and potentially reduce the lifespan of the innovation. The degree of required public disclosing and the possibility of reverse engineering are also other topics of agreement and both positively reinforce a patenting option. These questions evaluate how easy it is for competitors to access the “exclusive” information subjacent to the innovation, and therefore keep secrecy.
Regarding to the legal view the authors present two different, but curious approaches to deal with the question. Jorda (2007) focuses especially in the economic point of view, how much is the cost of processing and litigating IP when related to the revenue of the innovation. Daizadeh et al. (2002) proposes a more traditional view and analyses the validity and enforceability of patenting but also the dissemination of information within the company, which relates directly to secrecy. At this stage, I personally consider both points of great importance and both must be taken in consideration for a complete logical decision. The legal environment is particularly interesting since this is where governments and courts have the tools to control and manage IP protection, either by changing the length and/or depth for the patenting process (as discussed here). A less rigid patenting system will encourage companies to opt for secrecy and vice-versa.
Concluding, my opinion is that a critical analysis to both articles, and subjacent models, give a broad view of decision making when it comes to protection of IP. It is difficult to cover all variables embodied in the process and both perspectives should be used complementarily. Although, it is important to remember that this type of papers should be used as a way to make more informed decisions and not a infeasible formula for managing. Good sense must be used when analysing the results
The two roadmaps proposed in this text are both useful to choose between patent or secret to protect innovation.
The first difference between the two models is that the Daizadeh et al. (2002) model offers three different solutions to protect innovation. The first solution is to keep the innovation secret. The second solution is to do a patent to… Read more
The two roadmaps proposed in this text are both useful to choose between patent or secret to protect innovation.
The first difference between the two models is that the Daizadeh et al. (2002) model offers three different solutions to protect innovation. The first solution is to keep the innovation secret. The second solution is to do a patent to protect innovation. And finally, the third solution is to publish a defensive publication. In Jorda (2007) model, only the first two solutions are proposed. It’s important to say that none of the two roadmaps approach the subject of mixing solutions between the patent and the secret. In my opinion, this is one of the main disadvantages that can be find to these two roadmaps.
About the different questions, Jorda (2007) model appears to be more complete than the Daizadeth et al.(2002) . We may think that Jorda was inspired by the Daizadeh et al (2002) model to create its roadmap. The Daizadeh et al. model consists of 6 questions for which you can only answer yes or no. Jorda model consists of 11 questions. For each question, you can give a score between 1 and 10. Depending on the sum of all the scores, you get the optimal choice. Jorda model seems more accurate than daizebeth et al. model. However, when the score is between 45 and 75, it’s not possible to draw any conclusions with this model.
The type of questions between the two different roadmaps are also quite different. Again, the Jorda model seems more complete than the Daizadeh et al. model. Indeed, the questions asked in the Jorda model are more varied and covers wider topics.
In conclusion, I think that these two models are useful to choose how to protect an innovation. However, each of the two roadmaps are theoretical and generals models. I think we should be careful with these two models. I think the solutions may change depending on the type of innnovation, type of business, etc. Finally, I think the mixed strategy (between patent and secret) must be taken into account in these models.
One traditional approach to compare both roadmaps Daizadeh et al. (2002) and Jorda (2007) is to see in which way they are similar in the type of question (Marketing, Legal and Technical). But this has been already covered in details by all my colleagues.
Another method is to measure the extent to which the different roadmaps favorise or simply take into… Read more
One traditional approach to compare both roadmaps Daizadeh et al. (2002) and Jorda (2007) is to see in which way they are similar in the type of question (Marketing, Legal and Technical). But this has been already covered in details by all my colleagues.
Another method is to measure the extent to which the different roadmaps favorise or simply take into account innovative SME or/and bigger companies and also if the model proposed corresponds more to traditional industries or new ones (high-tech market for example). If we take the point of view of a SME or even of a start-up, is the model helping to choose whether the enterprise is going to patent or not. And as a consequence which commercialization strategy will the enterprise lead on the market.
Concerning the Daizadeh et al.’s roadmap, most of the six questions concern SME as well as bigger companies, except the last step: “Do the potential market revenues outweigh the patent and associated costs?”. If we think about the losses to which start-ups and SME are confronted, the litigation costs against big companies seem impossible to bear in the patent’s case. On the contrary, the question nine of Jorda’s model does not affect money but considers only if a patent could be upheld by a court or not.
The question two in this model relating to the competitive advantage according to the exclusivity of companies is also quite oriented for big firms. Because it is much more difficult for a SME or a start-up to retain the exclusivity on a new market when other companies are entering in.
Finally, the last question of Jorda’s roadmap, “Would it be dificult to determine if competitors are using the same development?”, implies a good knowledge of the concurrence in the market. Which is not often the case encountered for little enterprise in a new market.
To resume the comments above, we can observe that on one hand the first model (Daizadeh et al.) is quite correct for all types of companies but stays general while the second model (Jorda) reflects more factors but sometimes too specifically. On the other hand, the first roadmap gives some importance to new market or new technologies whereas the second not.
To conclude, an enterprise should know its own characteristics and the implications of each roadmap before deciding which one conclusion (patent or trade secret) it will follow.
How to choose a most effective way to protect an innovation.It is always a difficult question for all the innovators.Because the market value of innovation is hard to measure.Normally,there are two choices for innovators——patents and secrets.But Daizadeh et al.(2002) gave a different answers.The authors add defensive publication in their roadmap.Defensive publication is a intellectual property strategy for those innovators who… Read more
How to choose a most effective way to protect an innovation.It is always a difficult question for all the innovators.Because the market value of innovation is hard to measure.Normally,there are two choices for innovators——patents and secrets.But Daizadeh et al.(2002) gave a different answers.The authors add defensive publication in their roadmap.Defensive publication is a intellectual property strategy for those innovators who do not want to pay the high costs of applying patent and keeping business secret.In contrast,Jorda(2007) proposes a new roadmap,just focus on two traditional choices.
There are many differences between two roadmaps.However,to some extent,they also have same content.The roadmap of Daizadeh et al(2002) include six steps and can be expressed as a following graph.In this roadmap, innovators just should choose “Yes” or “No”,then they can get the answer.It quite simpler than the roadmap of Jorda(2007).While the roadmap proposed by Karl F.Jorda is more like a questionnaire,it sets 11 questions and each question should be answered on a scale from 1 to 10.By summing the score of each question,the innovator can get a final value which would range from 11 to 110 and different range represents different advice.It seems more precise than Daizadeh et al(2002)’ model,because it use mathematical way to give advice.
As I mentioned above,the roadmap presented by Daizadeh et al.(2002) gives three strategies,but it just considers two parts——marketing and technical which are also included in Jorda’s roadmap,and Jorda adds the legal(question 9-11) part in his roadmap.Compare the content of two roadmaps,I find that questions 5-8 in Jorda’s questionnaire are same as questions 1-2 in the following graph of Daizadeh et al.That means that two roadmaps all pay attention to the “durability” of the new innovation.In other words,it is a important question in both roadmaps that the new innovation can be easily reverse engineer and discover independently or not.And in this question,Jorda’s roadmap seems too precise but inefficient.In addition,these two roadmaps have different focus.The following map of Daizadeth et al focus on the durability and technical content of the innovation.But Joorda more focuses on the market value and competitiveness of the innovation.
Furthermore,both of them are fundamentally flawed.The roadmap proposed by Daizadeth et al lacks legal part and compared with another roadmap,it seems less rigorous.But that does not mean that the roadmap of Jorda is perfect.Because it just considers two ways to protect the innovation,but sometimes defensive publication is the best choice for innovators.Moreover,although Jorda’s roadmap gives a large range from 11 to 110 but the middle range (45-75) does not has any meaning which means that when people get score in this range,there is no significant difference between patents and secrets.However in this situation,the innovator does not need to do this questionnaire,it just waste time.
In a word,it is hard to choose which one is the best roadmap for innovators,because these two roadmaps all have advantages and disadvantages.So I think it is better to do both of them in the same time and then compare two result to find a optimal choice.
When we think about a patentable idea which is seeking patent protection and maintaining trade secrecy, we have to consider revenues and expenses of ours decision what we are going to do on the new idea. From the post, we have two roadmaps which would help us to find the best solation of choosing “Secrecy or Patents”. They are Daizadeh… Read more
When we think about a patentable idea which is seeking patent protection and maintaining trade secrecy, we have to consider revenues and expenses of ours decision what we are going to do on the new idea. From the post, we have two roadmaps which would help us to find the best solation of choosing “Secrecy or Patents”. They are Daizadeh et al. (2002) and Jorda (2007).
Analyzing the roadmap of Daizadeh et al. (2002) firstly, there are six steps to guides us toward the answer. They are separated into three big parts, including public disclosure, reversion, and technology. But in this theoretical analysis, we cannot know anything about the weight of every steps. For instance, on step one “Public disclosure necessary?” ,we cannot know the real answer. It could be 100%, 70%, 50%, 30% yes. Therefore, the answer of each steps would appear system deviation and then we don’t find the real solution which we want.
Regarding Jorda (2007), it is a questionnaire which has 11 questions. It is also separated into three parts which are marketing (questions 1–4), technical (questions 5–8), and legal (questions 9–11). In this form, each questions have score from one to eleven. That means the total would from 11 to 110. If the total is over 75, we would consider trade-secret protection for ours decision. If the total is below 45, patent protection would be more suggested. But if the total is from 45 to 75, the decision depends on which industry we engage in.
When I compare this two proposed roadmaps, I prefer to complement them instead of contradiction. Back to our real-life, we always don’t consider a big project with one or two aspects. If I was administrator, I would use Daizadeh et al. (2002) firstly to have a main idea roughly. Secondly, finishing the questionnaire of Jorda (2007), I think after this two steps I have a more completive idea.
However, as I said, when we think about “Secrecy or Patents” , we have to compare revenues to expenses. Ever though you have a great solution of this issue, you cannot manage to a good profit. Everything you did would be useless. From the two roadmaps, they guide us toward the answer but the main problem is that we don’t consider the real data. If we add a new idea which is about data statistics. Linking the two roadmaps to the consequence of data statistics, it would really help for “Secrecy or Patents” issue.
The two roadmaps proposed in this article have indeed some common features, but we can still find some differences.
First of all, they have questions that are nearly similar (about reverse engineering/the fact that it’s possible to discover the innovation independently/…) and some that are not formulated the same way, but aimed at the same answer ( “Is the technology… Read more
The two roadmaps proposed in this article have indeed some common features, but we can still find some differences.
First of all, they have questions that are nearly similar (about reverse engineering/the fact that it’s possible to discover the innovation independently/…) and some that are not formulated the same way, but aimed at the same answer ( “Is the technology area evolving quickly ? “ in Daizadeh et al. (2002)., and “Is it likely the commercial significance of the development would be limited in time ? ” in Jorda (2007) ).
There are also some questions that disappear between the 2 roadmaps (and some new ones in the latest one, about legal aspects), in particular this one : “Do the potential market revenues outweigh the patent and associated costs?”
It was the questions leading to a major difference, the fact that there are three outcomes possible in Daizadeh, and only two for Jorda (considering that the middle range results are not specifics enough, by saying you can choose both of the two others). If you choosed “no” for that question, the outcome was to not patent or keep the secret about your innovation, but to publish it in technical journals, which you cannot find 5 years later in Jorda’s roadmap. Maybe this can be explain by new legislations about patent and intellectual property.
Speaking about the outcomes possible, if you consider a 50% probability to choose yes or no in the first map, you have 40% to arrive on “Publish” and “Patent”, and 20% to “Trade Secret”. If you apply the same to the second one (by considering that every possible answer has the same probability), it’s 34% “Patent”, 35% “Trade Secret” and 31% “Doesn’t matter”. We can see that “Keeping the secret” have gain some importance in 5 years, probably for the same reasons than in previous paragraph.
Finally, it is explained in Jorda’s text that it comes from different author’s views, but there is also a big contradiction between these two maps. By choosing “Yes” for “Is the technology area evolving quickly ?”( Daizadeh et al. (2002).), you are told to choose the Secret alternative, which is in contradiction with “Is it likely the commercial significance of the development would be limited in time ?”( Jorda (2007)), which advise you to patent if you choose a number that correspond to a « Yes ». Same contradictions can be found elsewhere, but I am not going to expose all of them.
To conclude, the two maps have their pros and cons, but are only tools to help taking a decision. It’s my opinion that every case is different and you can’t just rely on a small roadmap to decide such important matters. But anyway, Jorda’s questionnaire seems better by taking in account more business categories (legal aspects,..), and saying that there are some cases where “it depends” of the innovation, sharing the same point of view that I have.
Daizadeh et al. (2002) and Jorda (2007) have each proposed a roadmap to determine how to choose between trade secrecy and patents when dealing with protection of innovations. After having read this blog post, I would like to comment on these roadmaps and specifically look into whether the two roadmaps overlap, contradict and/or complement each other.
An important note is… Read more
Daizadeh et al. (2002) and Jorda (2007) have each proposed a roadmap to determine how to choose between trade secrecy and patents when dealing with protection of innovations. After having read this blog post, I would like to comment on these roadmaps and specifically look into whether the two roadmaps overlap, contradict and/or complement each other.
An important note is that Daizadeh and his co-authors proposed their roadmap seven years before Jorda suggested his, so it can be assumed that Jorda was familiar with their work and maybe even took some inspiration from them.
It is important to understand, as Jorda (2007) mentions in the start of his article, that trade secrets (that as the name suggests are kept secret from the public) and patents (that require full disclosure of the invention) are not necessarily opposing, but in many cases they can complement each other as patents would mainly protect new inventions whereas trade secrets are suitable to protect know-how. Mixing patents and secrets is especially common in the food industry (Belleflamme 2013).
The roadmaps are both supposed to be guides to how innovators should choose between the two main types of protection. Noteworthy, as mentioned in this blogpost, Daizedah and his co-authors include a third, more defensive strategy to use in the protection of innovations, namely publishing inventions in technical or trade journals. A so-called defensive publication makes sure that competitors cannot patent something similar to your innovation as you by the publication have made this knowledge available, and their potential patent would therefore not involve new knowledge anymore. The roadmap of Daizedah et al. thus consists of 6 yes-no questions that should help an innovator decide whether to patent, keep secret or publish the innovation. Jorda’s roadmap is built on the same idea, but made up of 11 questions. It also does not take into account the “publish”-solution, but focuses on the two main protection modes.
The two roadmaps clearly overlap in their aim, as they try to achieve the same thing: Helping innovators to choose between different modes of protection. They also include several similar questions that address the same issues. However, Jorda’s framework gives room for taking into account the degree of the issue by requiring respondents to grade their answer from 1-10, whereas Daizedah et al.’s roadmap requires yes or no-answers. I would argue that Jorda’s map hence makes it easier to apply the roadmap to reality, as this scale-function creates more nuanced answers. On the otherhand, a benefit with Daizedah and his co-authors’ framework is that after completing the six steps you will always arrive at a solution, whereas you with Jorda’s framework could risk ending up in the middle of the scale where there is no clear-cut answer to which mode of protection would be best for your particular innovation. Nevertheless, as reality is far from clear-cut, I do think that the Jorda model better reflects the real world. Sometimes, we might be dealing with an innovation that is not easily protectable by the conventional modes and then that should be discoverable in the model.
I would say that the two roadmaps could, and probably should, be used complementarily. As they both are based on academic research, performing two “tests” like these before deciding how to protect your innovation seems smarter than just addressing one roadmap. If you get the same result, you can be fairly sure you are going for the best strategy. Another good illustration of the complementarily of the two roadmaps would be e.g. imagining that you do the 11 questions in Jorda’s and end up in the middle, then you could turn to Daizedah and his co-authors and see what they propose you to do. Maybe you would discover that their third option of publishing could be relevant. Having commented on the overlap, contradiction and complementarily of the two models, I would conclusively add that being aware of the differences and similarities and using both roadmaps in a complementary way when looking into a innovation protection issue hence seems as the supreme way of dealing with the two roadmaps.
First of all, I think that the choice between trade secrets and patents is not an absolut one: in most of the cases the optimum is to mix the two. In the same way, both the models that are analized in this article can be useful, as they answers different questions, so I reckon that in order to take a… Read more
First of all, I think that the choice between trade secrets and patents is not an absolut one: in most of the cases the optimum is to mix the two. In the same way, both the models that are analized in this article can be useful, as they answers different questions, so I reckon that in order to take a clear and effective decision they both have to be taken into account.
The very first thing that emerges when comparing the two differents approaches is the different grade of complexity in the answers the authors were proposing: I liked the very direct way in which Daizadeh et al. pose the questions, and the fact that they only require a simple yes/no answer: even without reading the full paper (which is unfortunately not available for free download), one can get a clear idea of what the author think is the best choice, case by case. Also, being able to summarize the theory in the graph dispayed above makes the understanding even more intuitive, and I’m convinced that simplicity, when combined with efficacy, is a remarkable asset. Last, but not least, I liked the “egg of Columbus” third-way idea of defensive publication, which constitutes an effective defense in some cases where patents or secrecy may not fit the problem.
On the other hand, Jorda gives a more in-depth approach, as he point out for every question asked all the aspects of the analysis, thus broadening his view on the field. Following the point of view of the author, it’s easy to notice how tecnological aspects of the subject are overshadowed, while he focus more on the legal aspects, i.e. patent protection
That said, the two roadmaps imply some similarities, and they also overlap on some aspects. For example, they give the same answers -to patent- when asked to determine what’s the best choice in “reverse engineering” and “discover independently” cases.
Conversely, they also agree that not to adopt a patent is the best choice when facing reduced commercial impact (even if the two authors suggest differents strategies: defensive publication for Daizadeh et al., trade secret for Jorda).
The 2 frameworks proposed by Daizadeh et al. and Jordo are extremely simplified ways for companies to think about protecting their innovations and development through either patents or as trade secrets. They both achieve similar end objectives of proposing patents for products which can easily be reverse-engineered and trade secrets for processes which are more difficult to be copied by… Read more
The 2 frameworks proposed by Daizadeh et al. and Jordo are extremely simplified ways for companies to think about protecting their innovations and development through either patents or as trade secrets. They both achieve similar end objectives of proposing patents for products which can easily be reverse-engineered and trade secrets for processes which are more difficult to be copied by the outside world. The frameworks however differ in their method of evaluation.
Daizadeh et al. looks primarily at the development from a technical perspective. The framework tries to understand how the technology would evolve over time and thus, decide the best way of protection. Jordo also considers this; however he does so from a competitor and commercial perspective. The financial advantages of maintaining exclusivity and the capability of competitors to arrive independently at the same product are analysed in order to make a decision. Jordo’s framework touches the legal aspects involved, however, only Daizadeh et al.’s framework measures this is in a concrete way by looking at the IP processing and litigation costs.
Daizadeh et al.’s framework is binary, whereas Jordo’s allows for a grey area, suggesting that a combination of both means of protection is appropriate. In today’s rapidly changing world, I believe it is not easy to accurately predict how technology or competition would evolve over time. Hence, it is more advantageous for companies to determine cost-benefits of both means and use them together in a complementary way at every stage to achieve maximum protection for their innovations.
The Daizadeh et al. model is a path to follow which guides the firm towards the answer. This model doesn't seem very nuanced. There exists three possibilities, patent, trade secret or defensive publication, depending on the answers yes or no. The other model, the Jorda model is composed with eleven questions which are organized by categories, marketing, technical and legal.… Read more
The Daizadeh et al. model is a path to follow which guides the firm towards the answer. This model doesn’t seem very nuanced. There exists three possibilities, patent, trade secret or defensive publication, depending on the answers yes or no. The other model, the Jorda model is composed with eleven questions which are organized by categories, marketing, technical and legal. This is not a path which tells the firm whether it should choose the patent or the trade secret : it is a total points and its score gives an indication about the answer. This model is more nuanced than the first one. Having a score between forty-five and seventy-five permits the firm to choose what it wants. That tells it that it won’t suffer from any prejudice whether it choose one strategy instead of another one.
Furthermore, the question “Public disclosure necessary?” has actually no weight in the path because when the firm answers “Yes” to “Easy to reverse?”, this cancels the “No” answer of the question “Public disclosure necessary?”. In Daizadeh et al. model, each question has the same weight. The firm can weigh itself as it wants the answers “Yes”, “No”, “Very Little”, “Likely”, “Unlikely”, “Very Great” and so on.
Nevertheless, some points in the two models are similar. For example, the question of the Jorda model “Is the development likely to be a commercial product or the subject of licensing?” is the same as “Are you potentially interested in licensing the invention?” in Daizadeh et al. model. Then, there are the questions “Can the nature of development be ascertained from commercial product (could the product be “reverse engineered”)?” and “Is it likely others will independently arrive at the same development?” are gathered in the question: “Is the idea easy to reverse engineer or discover independently?” in Daizadeh et al. model.
Also, some questions are in one model but not in another. For instance, the Daizadeh et al. model asks whether the technology area evolves quickly or whether it is a new area of technology. The Jorda model asks different questions about the technological aspect, but it doesn’t take into account the revenue point of view, on the contrary of the other model. Nonetheless, it asks questions about the legal aspect, which the other model doesn’t tackle. Other dimensions are in Jorda model which are not in Daizadeh et al. model like the competitive advantage and the exclusivity, the limits in time and the development of alternatives.
The answers as well as the questions can also be sometimes different. For example, in the model composed by different paths, when the firm answers “Yes” to the question about “reverse engineer”, the result can be to choose the patent or the defensive publication depending on the answer about the revenue. This is similar to the Jorda model. But, when the firms answers “No”, the final result is not always the trade secret as in the Jorda model. It is the case only when the technology is changing rapidly and if not, the area of technology must not be new and there must not be any licensing opportunity. Actually, when the firms answers “No” to the question about “reverse engineer”, the result (a patent or a trade secret) can be the opposite from the Jorda model result, which would favor the trade secret solution. This is the case when, in the Daizadeh et al. model, the technology is changing rapidly, when the area of technology is new or when there is an opportunity to licensing.
In this comment I am going to compare two roadmaps which help innovative enterprises to face the question of choosing between patent and trade secrecy. I will first shortly describe the content of the roadmaps, after what I will compare the two roadmaps in order to see to which extent they overlap, contradict or complement each other.
Daizadeh et al.… Read more
In this comment I am going to compare two roadmaps which help innovative enterprises to face the question of choosing between patent and trade secrecy. I will first shortly describe the content of the roadmaps, after what I will compare the two roadmaps in order to see to which extent they overlap, contradict or complement each other.
Daizadeh et al. (2002) propose a six steps procedure to choose the strategy to adopt and Jorda (2007) proposes a questionnaire of eleven questions, which are answered on a scale from one to eleven.
To which extend do the roadmaps overlap?
Both roadmaps have the same objective: helping innovators to choose between patent and secrecy through a list of practical questions.
Almost half of both questionnaires address the same aspects: licensing opportunities (step 5 and question 1), reverse engineering (step 2 and question 6) and technological aspects (step 3 and question 4). Moreover, both roadmaps agree on the issue of the questions on these aspects.
To which extend do the roadmaps contradict each other?
In my view, there are 2 substantial contraditions: the interdependence within the questions in the questionnaire and the attitude to adopt when the innovation is easy to reverse engineer. Indeed, according to Daizadeh et al. (2002), if the innovation idea is easy to reverse engineer in step 2, the proposed answer is clearly to patent. Although the scale for question six is designed to propose the patent protection as an advantageous solution in Jorda (2007), nothing indicates that the total score would reach the same conclusion.
Secondly, in Daizadeh et al. (2002) the use of the 6 steps approach requires to strictly follow the step order and answer restrictively yes or no. If one step is missing, we cannot carry the argument to the end. On the opposite, there is no predefined order in Jorda (2007) and the answers are independent of each other and can be nuanced due to the utilization of a scale instead of a yes/no answer. Likewise, we can see a divergence on the final solution: when you respect the order and answer of all questions, you are certain to have a final solution with the Daizadeh et al. (2002) roadmap, when this is not the case with the Jorda (2007) roadmap where you can have a total score between 45 and 75 and thus no defined final solution.
To which extend are the roadmaps complementary?
By comparing them, I discovered that the two roadmaps have a lot of complementarities: the final choices, the different aspects taken into account and the utilization of the words to talk about innovations.
Firstly, while Jorda (2007) proposes two response scenarios: patenting or keeping the secret, Daizadeh et al. (2002) proposes a third alternative as a final step of the procedure, which consist in a defensive publishing of the innovative idea in a technical journal. This publishing gives a prior act to innovators and can be considered as a complement of patenting or keeping the secret.
As far as the different aspects taken into account are concerned, Jorda (2007) adds a legal aspect in the questionnaire with the questions 9 to 11. This is an important aspect given that if firms can’t defend their interests by suing firms with patent infringement, they won’t choose to patent their ideas and will instead prefer to keep them secret. This is thus a crucial factor in the decision of patenting or keeping the secret.
Finally, Jorda (2007) takes into account a larger variety of innovations than Daizadeh et al. (2002) by replacing the word innovation by development.
Firstly, I would say that I am a bit septic. These charts seem to be very helpful in a theoretical context. I guess that with all the factors that influence the economy, it is surely hard to predict anything through a path of questions. That was my first feeling when I discovered the charts.
But let's consider a simplified situation, I… Read more
Firstly, I would say that I am a bit septic. These charts seem to be very helpful in a theoretical context. I guess that with all the factors that influence the economy, it is surely hard to predict anything through a path of questions. That was my first feeling when I discovered the charts.
But let’s consider a simplified situation, I think that the chart of Jorda, because of a bigger number of steps, is more complete. More than the number of question, we also see some considerations about legal aspects that we don’t find in Daizadeh’s chart. This point has been noticed several time already but it seems to me that it is essential to the process of decision. The scale is also more precise with an interval between 1 and 10. At the end of this chart, we have build a path that fits more to reality than in Daizadeh’s one.
I see Daizadeh’s work more like a tool to provide an orientation. I mean by that that the 6 steps can only give a very vague suggestion of what to do. On the other hand, it is really interesting to have a third solution: the defensive publication. This is a very strategic option, a tough one I think because of the need to have a extremely clear view on the concerned market. And the binary choices simplifies again the situation.
Jorda’s chart appears to be more accurate and adapted to the reality that an innovator could face but it also requires to have a good overview on the different aspects (marketing, technical and legal aspects). Daizadeh’s one leads to a more basic characterization of the situation but at the same the same time, I feel like it can fit to a larger number of situation. Smartness is still required in this case (of course) but I suspect that there is a question of having a certain sense for business then…
To start with, both Daizadeh et al. 2002 and Jorda 2007 present ways/roadmaps how to manage the protection of innovation. But, while Jorda 2007 compares the two options of patents and trade secrets, concluding that in many cases the two should go together rather than using only one of them, Daizadeh et al. (2002) adds a third option i.e. defensive… Read more
To start with, both Daizadeh et al. 2002 and Jorda 2007 present ways/roadmaps how to manage the protection of innovation. But, while Jorda 2007 compares the two options of patents and trade secrets, concluding that in many cases the two should go together rather than using only one of them, Daizadeh et al. (2002) adds a third option i.e. defensive publication. A defensive publication is suggested in case something can not be kept secret and at the same time the potential revenue due to protection with a patent is lower than the actual costs associated with patenting.
Daizadeh et al. (2002) present a model that is composed of six steps, polar questions to be answered either with yes or no, in order to decide if a protection should be patented or kept with a trade secret. In this respect, Jorda (2007) better accounts for the high degree of uncertainty inherent in issues regarding this latter decisions, as he proposes 11 questions to be answered on a scale ranging from 1-10.
Content wise and starting with similarities, both authors cover the question if intentions to license the development exist, suggesting that in this case a patent is most appropriate for protection. At the same time, the issue of how easy an innovation may be copied by others is relevant in both articles. Here, for example the term reverse engineering, meaning the process of extracting information out of a product like functionality, process of production, etc. is tackled. Both authors advice that if a product can be easily understood and developed by others, a patent should be used to protect it. In some aspects the models could complement each other. For example, while Daizadeh et al. (2002) explicitly includes the financial aspect in their model, leading to the idea of defensive publications, this path is not presented by Jorda (2007). At the same time, I believe Jorda (2007) makes a very valid point including legal issues and associated issues of dissemination of ideas or the likelihood to determine infringement.
Last but not least, I do not feel a real contradiction of the two models. While Jorda (2007) tackles more strategic issues like regarding competitive advantage, Daizadeh et al. (2002) focuse more on technical issues. Both are in my opinion valid and relevant points. It may be true that the model of Daizadeh et al. (2002) is more simplified than the one of Jorda (2007), but at the same time they include the option of defensive publication, which I regard as a very valuable extension. In conclusion, in the situation of an innovator, I would take the time to assess my innovation with both models, as I see them not very contradictory and useful to have a broader perspective on this important decision under consideration.
The two frameworks have some overlapping aspects such as the fact that they consider whether or not it is possible to reverse engineer the product, the fact that they consider licensing, the potential of independent discovery,… Some aspects, however, are only covered by the method of Jorda (2007). Examples of these are the likelihood to discover if the competitors… Read more
The two frameworks have some overlapping aspects such as the fact that they consider whether or not it is possible to reverse engineer the product, the fact that they consider licensing, the potential of independent discovery,… Some aspects, however, are only covered by the method of Jorda (2007). Examples of these are the likelihood to discover if the competitors are using the innovation, the limitation in time of the patent,… The aspects covered in the model of Daizadeh et al. (2002) are, in my opinion at least, mostly covered in the more recent model form Jorda (2007).
The largest contradiction, in my opinion, lies in the different set-up of the models. The Jorda (2007) model uses a point system, in which none of the questions can irreversibly change the decision all by itself. The questions count for a maximum of 10 point on a total of 110. A completely different case is observed in the Daizadeh (2002) model where 1 question can completely rule out the potential for protection by trade secret. When we translate this to Jorda (2007) ‘s model, we can say that the first two questions have an enormous weight. In Jorda (2007)’s model all questions have the same weight.
I believe that the complementarity of the systems lies in the contradiction that was described in the paragraph above. In my opinion is the Daizadeh (2002) model a bit to black-and-white. Answering 1 question can completely change the outcome. An example where this approach may lead to wrong decision is probably the most famous trade secret in the world: even though it is not that hard to discover the exact composition of Coca-Cola, it is still claimed that no-one can do it. If Coca-Cola had patented the formula, it would already be expired for many years. Obviously the publication of the formula would decrease the attractivity and mystique of Coca-Cola. The Jorda (2007) model is not flawless either as in some cases 1 aspect can be so important that it should influence the final result. I therefore believe that a more qualitative approached should be used in which both of the frameworks can be used to guide your way or to raise any potential red flags.
In oder to help innovators to make choices between secrecy and patents, Daizadeh et al. (2002) and Karl F. Jorda(2007) proposed their own roadmaps .
Following Daizadeh et al.’s guidance ,the innovators have to complete 6 questions with just “Yes” or “No”. This measurement can be also expressed by a flow graph ,which is much easier and… Read more
In oder to help innovators to make choices between secrecy and patents, Daizadeh et al. (2002) and Karl F. Jorda(2007) proposed their own roadmaps .
Following Daizadeh et al.’s guidance ,the innovators have to complete 6 questions with just “Yes” or “No”. This measurement can be also expressed by a flow graph ,which is much easier and more directly for innovators to make choices.While the questionnaire designed by Karl F. Jorda sets 11 questions to let the innovators give answers on a scale from 1 to 10. By summing each scores,innovators can get the ultimate value. According to the different categories range from 11 to 110,they can easily find the correlative choice. It seems much more accurate and rigorous when take the means of numbers into account.
In addition,the roadmap proposed by Daizadeh et al. is focus on two parts, marketing (Q:5–6)and technical(Q:1–4) ,but lacked the legal part(Q:9–11) which is also covered by Karl F. Jorda’s roadmap. To be specific, on the one hand,the questions 5—8 in Karl F. Jorda’s roadmap are totally the same as Daizadeh et al.’s questions 1—2. From the viewpoint of technological aspect , Karl F. Jorda didn’t take the effectiveness of technology in a given time period and the discovery of technology in new areas into consideration. When we refer to the marketing area, Karl F. Jorda focused more attention on pros and cons due to the competition, through quantization,than Daizadeh et al. did . Besides, “whether the commercial significance of the development would be limited in time “,which is a very important reference in my opinion,doesn’t point out in Daizadeh et al.’s roadmap.On the other hand, Karl F. Jorda’s roadmap is a huge advance on legal aspect as its a vital factor in discriminate between patent and trade-secret.
What’s more,when we just analyze the outcome of both of the roadmaps ,it is easy to find Daizadeh et al.’s roadmap has the third choice—defensive publication,doesn’t concluded from Karl F. Jorda’ s one. Furthermore, innovators can get a unique solution finally followed Daizadeh et al.’s roadmap.On the contrary,it is not hard to get a score in the middle range(45–75),which means it doesn’t really matter which approach is flowed initially. If in this case,innovators will get an ambiguous answer and I think it may make no sense to do this questionnaire.
All in all, in my opinion, it is really a hard question to say which one is much better,however,because both of these roadmaps have disadvantages and advantages separately and can relatively complemented, it’s better for innovators or innovative firms to use these two evaluated methodology at the same time to get the ultimate solution.
The evaluation methodologies developed by both authors, Daizadeh et al. and Jorda, are interesting ways of analysing one’s invention or development to determine whether one needs to protect his development or idea by means of a patent or by means of a trade secret.
Though the questions are different in the two roadmaps, their underlying objective or motivation is quite… Read more
The evaluation methodologies developed by both authors, Daizadeh et al. and Jorda, are interesting ways of analysing one’s invention or development to determine whether one needs to protect his development or idea by means of a patent or by means of a trade secret.
Though the questions are different in the two roadmaps, their underlying objective or motivation is quite similar. The bottom line in both the roadmaps is that if one’s development or invention is capable of providing competitive advantage, and is a new technical or technological innovation that has not yet been discovered by competitors, but is capable of being discovered by competitors either independently or by reverse engineering in a short period of time, then it is better to go in for a patent, as it would provide a legal protection to one’s development, that would ensure that all commercial benefits flow to the patent owner, and would discourage competitors from trying to duplicate the development.
Though the end goal or objective of both the roadmaps is quite similar, they approach the objective from different angles and are structured differently. Daizadeh’s model concentrates more on the technical aspects of the invention or development and aims to give a definite yes or no answer to the evaluator. On the other hand, Jorda’s model delves deep into the commercial aspects of the development, and seeks to provide an answer that would be more in sync with what the entrepreneur or business manager in charge of the development would be concerned about.
Daizadeh’s model also contains an extremely important nuance which is not present in Jorda’s framework. End of the day, going in for a patent, irrespective of the fact that it may be more advantageous than a trade secret, must make sense from a financial or economic point of view. Daizadeh’s model captures this and states that if the patent related costs are higher than the potential benefits derived from the patent, then it makes more sense to publish the invention in technical or trade journals, thereby making the invention a part of public domain, and preventing a patent from being issued to the competitors for the same development.
Thus, to sum up, in my opinion, both models work towards the same objective or goal, but take different approaches, and hence, it would make a lot of sense for the inventor or the entrepreneur to use both models at the same time, as it would give him a comprehensive and broad framework covering both technical as well as the commercial angles, within which he can evaluate the best solution out of the various options available to him.
First, Daizadeh et al.’s roadmap is a list of yes or no six questions who lead to secrecy, patent or publication protection. Jorda’s one is a list of eleven questions whose answers are graded on a scale from one to ten and then the total score determines if you should choose secrecy or patent protection. A total score of 75… Read more
First, Daizadeh et al.’s roadmap is a list of yes or no six questions who lead to secrecy, patent or publication protection. Jorda’s one is a list of eleven questions whose answers are graded on a scale from one to ten and then the total score determines if you should choose secrecy or patent protection. A total score of 75 and above leads to trade-secret protection whereas a score of 45 and below leads to patent protection. Jorda also says that with a middle score of 45-75 the choice between secrecy and patent doesn’t really matter.
Second, questions on Jorda’s roadmap are explained by a comment below the questionnaire in order to facilitate understanding and to be accurate when grading the answers. It is something that is not present in Daizadeh et al.’s roadmap.
We can also see that Daizadeh et al. mainly focus on technical questions. Questions are more general and lead directly to the final answer. That is not the case with Jorda. His roadmap focuses on three domains such as marketing, technical and legal questions. This roadmap is then more detailed and complete.
There is still a resemblance and a complement between those two roadmaps on technical questions. Indeed those two ask on subjects such as « public disclosure », « reverse engineered », « independently discovering ».
To sum up, Daizadeh et al.’s roadmap is easier and gives a general overview of what should be selected (secrecy or patent) while Jorda’s roadmap is more detailed and accurate.
Both Daizadeh et al. (2002) and Jorda (2007) roadmaps are tools to analyse whether an innovation should be diffused publicly or kept secret. In the 2002 model, Daizadeh et al. propose 3 different options: issue a patent, keep the invention a trade secret or rely on defensive publication. The last one is particular to this roadmap and can be… Read more
Both Daizadeh et al. (2002) and Jorda (2007) roadmaps are tools to analyse whether an innovation should be diffused publicly or kept secret. In the 2002 model, Daizadeh et al. propose 3 different options: issue a patent, keep the invention a trade secret or rely on defensive publication. The last one is particular to this roadmap and can be interesting when a company is afraid that the competition can bypass the patent or claim the intellectual property of the innovation. Jorda’s 2007 roadmap on the contrary only proposes 2 different possibilities, namely trade-secret protection or patenting.
Even though both roadmaps treat the same subject, they are quite different. First of all, the Daizadeh’s roadmap is composed of 6 questions where you can respond either yes or no to each of them. Depending on your answer, the model proposes the preferred outcome. Jorda’s roadmap on its turn, is composed of 11 questions. You can choose to give a score between 1 and 10 to each question and in the end you should sum up your total points. If the sum is above 75, trade-secret protection is the best option, if the score is below 45, patent protection suits best. If you have a middle range score (from 45 to 75) the author says it does not really matter which technique you use. I personally think this last part a bit vague and maybe an easy conclusion for middle range scores.
Another difference is the scope of the questions. The first model only has 6 questions so it is normal to say that the 11-question questionnaire is more complete. Additionally, when we look at the sort of questions asked, the Jorda roadmap focuses on marketing, legal and technical ones whereas the other roadmap has its orientation primarily on technical questions.
As a matter of conclusion, we can say that the Jorda roadmap is more complete and specific whereas the Daizadeh et al. model only offers 6 questions with a limited answering possibility (yes or no). But, we do not have to exclude the importance of the latter depending on the company and the situation. Maybe this model is more adapted in some cases. Furthermore, Jorda’s roadmap has been created in 2007 whereas the other one in 2002 so we can assume that the author has inspired himself from the oldest model and has tried to improve it.
As a last reminder, I would like to state that both patents and trade secrets are equally important depending on the company, the sector, the evolving environment, laws, etc. Jorda (2007) said “using patent and trade-secret protection together in a synergistic manner results in a potent exclusivity” to illustrate these words accordingly.
Before examining to which extent both roadmaps overlap, contradict or complement each other, let us begin by pointing the differences between these two roadmaps.
The biggest difference that we noticed by looking at the two roadmaps is the existence of a third conclusion in the Daizadeh’s roadmaps. In fact in addition to “trade secret” and “patent” , the Daizadeh’s roadmap propose… Read more
Before examining to which extent both roadmaps overlap, contradict or complement each other, let us begin by pointing the differences between these two roadmaps.
The biggest difference that we noticed by looking at the two roadmaps is the existence of a third conclusion in the Daizadeh’s roadmaps. In fact in addition to “trade secret” and “patent” , the Daizadeh’s roadmap propose a last solution which is “defensive publication” in technical or trade journals.
Another difference is the difference of scale between the two roadmaps. Daizadeh’s roadmap’s only asks for a “yes” or “no” for each question whereas the Jorda’s roadmap has a scale from 1 to 10 for each question. It makes the Jorda’s roadmap more nuanced than Daizadeh’s one.
The questions both roadmaps cover are the possibility of reverse engineering and the opportunity of licensing. Concerning reverse engineering, both roadmaps recommend the patent as a solution if the product is easy to copy via reverse engineering. Both roadmaps also advise to patent the product if it could be the subject of licensing.
Jorda’s roadmap covers the legal aspect of the product’s protection which is not covered by Daizadeh’one. Daizadeh’s roadmap focuses on the marketing and technical aspects. On one side, Daizadeh’s roadmap allows to take less risk by sending us to one solution or another with one “yes” or one “no”, we are never hesitating between two possibilities, but on the other side, the lack of some more questions about financial and legal aspects makes it less precise. On the contrary, Jorda’s roadmap is more precise by covering all the aspects with his questions but there can always be uncertainty at the end by obtaining a score between 45 and 75 which makes it more risky to follow.
Given that we are living in a nuanced reality and that choices in life are not based on binary informations, I would say that Jorda’s roadmap is more realistic than Daizeh’s roadmap and I would rather follow this roadmap.
How to choose between secrecy of patent in order to protect the innovation ?
Several authors tried in the past to answer this question to using roadmaps. What we can immediately notice as differences between the both roadmaps is first the year in which they have been published and also the form that they have been given. Indeed, the oldest roadmap… Read more
How to choose between secrecy of patent in order to protect the innovation ?
Several authors tried in the past to answer this question to using roadmaps. What we can immediately notice as differences between the both roadmaps is first the year in which they have been published and also the form that they have been given. Indeed, the oldest roadmap is the one published by Daizadeh and al in 2002. We may ask ourselves if it’s not too old to take into account , should it be revised ? Innovative development has been improved and technological innovations may not be protected as the same way as they were twelve years ago.The Jorda’s roadmap dates from 2007 , which is more recent and perhaps more pertinent.
In the form, they differ as one employs binary answers ( Jorda’s) whilst the second one uses more detailed answers as they used scales going from 0 to 10.
Since Jorda’s questionnaire is more accurate and includes eleven questions rather than six, we can think that it takes into account more types of innovation : robotic, recipe, new technologies and so on than Daizadeh does. That’s why, in my opinion, Jorda’s roadmap might better suit to today’s innovations.
The both questionnaires are similar in some respects. For instance, both wonders if the innovation is easy to reverse or to counteract – « Is the idea easy to reverse engineer or discover independently? Yes? –> Patent , Daizadeh 2002 » / « Is it likely others will independently arrive at the same development? », « Is it likely one could develop alternatives », Jorda’s 2007.
In Daizadeh’s roadmap, the answer cannot be discussed, if the idea can be reversed then one needs a patent. While in Jorda’s roadmap, it’s more precised. They are two questions instead of only one, can the competitors arrive at the same development or can they find alternatives ? The answers to those questions differ. If for the first question patent is granted , in the constrat, for the second question trade secrecy might be a better solution : « the relative value of the trade-secret option is higher (because of the decreased value of patent protection) ». Once again, Jorda’s answers are more accurate and takes into account more factors related to the innovation.
A second example of the lack of precision from Daizadeh and al is seen around the question « Is the technology area evolving quickly? Yes? –> Secret ». They highly recommand a trade secrecy provided that the technology improves quickly. While Jorda’s answer distinguishes between short and long commercial life. For a short commercial life, a patent is prefered whilst for a longer life the trade secrecy is the best option ( refer to Q4 Jorda).
In general, I would say that Jorda’s roadmap completes Daizadeh and al’s. I would recommend innovative firms to look at the two questionnaires and balance each response. Daizadeh and al might seem clearer and more direct whereas Jorda completes by adding questions such as Question 9 or Question 11 which are not reproduced in the 2002’s roadmap for instance.
The two suggested models to choose between a patent-protection and a secret-protection have some common characteristics, but are still very different.
First of all, the model of Daizadeh et al. (2002) offers a third possibility, the “defensive publication”, to protect the innovation while Jorda’s model (2007) just considers two options. It implies that the first one is maybe more adapted… Read more
The two suggested models to choose between a patent-protection and a secret-protection have some common characteristics, but are still very different.
First of all, the model of Daizadeh et al. (2002) offers a third possibility, the “defensive publication”, to protect the innovation while Jorda’s model (2007) just considers two options. It implies that the first one is maybe more adapted in the sense that more possibilities allows the best protection system for an innovation. However, this first model is based on a yes-or-no questionnaire of 6 steps, while the second one is based on a 1-to-10 scale for 11 questions. The yes-or-no implies that there are fewer nuances, as nothing is completely black or white. The 1-to-10 scale is therefore more precise and allows you to be more nuanced in the answers. The choice has thus to be made between a shorter yes-or-no questionnaire with more end-possibilities or a longer 1-to-10 scale questionnaire with fewer end-possibilities.
Second, the best protection in Jodra’s model (2007) comes out of a total score (between 1 and 110), with a large “no man’s land” while the Daizadeh et al. model gives a precise answer. However, this model does not take into account the marketing and the legal aspects of the innovation, which the Jorda’s model takes into account.
To conclude, I could not say which model is the best, as everybody has its own preferences. The nature of the innovation also has a role to play in the choice of the model. Both have advantages and disadvantages. Mixing the two models to build a third one could be more complicated than expected as they are based on very different methods. A solution could be to do the exercise on both models and to take a decision after the two outcomes.
Today firms can choose among multiples solutions in order to secure and maximize revenue from their intellectual assets. In this comment , I will focus on two of them : patent and secrecy. I will try to resume and compare the two roadmaps presented above (Daizadeh et al (2002)and Jorda (2007)).
Before going into details I would like to point out… Read more
Today firms can choose among multiples solutions in order to secure and maximize revenue from their intellectual assets. In this comment , I will focus on two of them : patent and secrecy. I will try to resume and compare the two roadmaps presented above (Daizadeh et al (2002)and Jorda (2007)).
Before going into details I would like to point out three methodological differences between those two roadmaps.
First the Daizadeh roadmap is based on binary choices while, Jorda offer a wider choice of answers. Indeed, each question can be answered by a number which scale your approval or disapproval to certain sentences (Ex: 10 = very likely and 0 = very unlikely). At the end, you have to compute the sum of the numbers associated with each of your answers. A very low result means that you should patent your development (= any sort of innovations or inventions) while a high one advise you to rely on secrecy. Second, the Jorda framework is more elaborate because it relies on nearly twice more questions (11 agains 6 in the Daizadeh framework). Third, the Daizadeh roadmap can, under some circumstances, lead you to a third result : the publication of your development in technical or trade journals. Here the goal is no longer to keep something for yourself but rather prevent others to do so.
Now let’s turn to the content and the recommendations of both roadmaps.
The two roadmaps stresses conjointly the strong need for patenting your development if you intend to license it or if it can be easily imitated convincingly by competitors (reverse engineering). Both also support patenting if you are unable to hide your development. This can be the case because of the need for public disclosure (Daizadeh) or because too many people from your organization will have access to the details of your development making leaks unavoidable (Jorda).
So far we linked three points of the Daizadeh roadmap with three points of its Jorda counterpart. The others points of those two papers are much more difficult to compare. Indeed, they do not contradict or get along with each other, they rather focus on different questions.
The Daizadeh paper raise technologic questions about the development that would be patented or kept secret : is it a new area of technology or is it a rapidly changing technology area?
On the contrary The Jorda paper adopt a strategic point of view. How useful is it for us to make sure that we are the only one to use it? And for how long? How bad would it be if someone else secure this development for himself? If we choose to patent our development, can we enforce easily our exclusivity? Would it be fruitful to pursue a competitor who is copying illegally our development?
In conclusion, I would say that those two roadmaps are highly complementary. Indeed, they do not contradict each other. Furthermore, each of them focus on different elements : technologic (Dazaideh) or strategic (Jorda). It would be interesting to convert the binary answer of Dazaideh in “scale”answer such as those used in Jorda and then collapse those two different roadmaps in a comprehensive one.
Patent or secret? It’s a controversial question that both roadmap, “Jorda's” and “Daizadeh and Al's”, are trying to clarify. The Daizadeh and Al's roadmap is a sequence of 6 question with only binary answers (Yes/No) that lead to a unique and fixed action to be taken while Jorda’s roadmap present a statistic process in form of a questionnaire with 11… Read more
Patent or secret? It’s a controversial question that both roadmap, “Jorda’s” and “Daizadeh and Al’s”, are trying to clarify. The Daizadeh and Al’s roadmap is a sequence of 6 question with only binary answers (Yes/No) that lead to a unique and fixed action to be taken while Jorda’s roadmap present a statistic process in form of a questionnaire with 11 questions with a scale of 1 to 10 where each answers add some “weight” to different directions that is summed at the end.
First, after a quick comparison, there are some areas where both model do agree with each other like the common decision not to reveal the innovation product when it can easily “reverse engineering or discovered”.
Then, after a preciser analyze of these roadmaps, some differences appears. The biggest difference lies in the framework of questions. Jorda’s gives more weight on questions about the legal, marketing and technological aspect while Daizadeh and Al’s treats only the technological way. Moreover, Jorda’s method takes into account alternative development.
Hence, an important area that is only covered by Jorda’s is the competitive disadvantage that company would have by letting a competitor have exclusivity over the innovation. Jorda’s take into account another dimension: the control of the flux of information in case of a secret. Indeed, if the company works with a secret but the stream of information is too big, the secret will quickly discovered.
While Jorda’s roadmap is undecided for average results, Daizadeh and Al’s proposes a third process to protect the innovation when the potential market revenues outweigh the patent and associated costs.
As a conclusion, one can say that the major differences listed above make both methods complementary one to another. Indeed, the best way to choose is to consider the recommendations of both methods and then make a decision on which is the best approach. The key lies in the very nature of the innovation and mainly on the context in which it develops itself. However, both roadmaps fail to consider whether the invention would be highly beneficial for the society or not/ how beneficial the invention could be for the society (i.e medicine).
First of all, as we can see on the Jorda's chart : Trade Secret Evaluation Questionnaire, the questions seems to be more accurate than on the Daizadeh and all roadmap's. As a matter of fact, the both schemes are treating the same subject : dealing between patenting or keeping trade secret.
As we can see on Daizadeh and others chart, the… Read more
First of all, as we can see on the Jorda’s chart : Trade Secret Evaluation Questionnaire, the questions seems to be more accurate than on the Daizadeh and all roadmap’s. As a matter of fact, the both schemes are treating the same subject : dealing between patenting or keeping trade secret.
As we can see on Daizadeh and others chart, the roadmap is established as a binary roadmap letting place to less opportunities than on Jorda’s questionnaire. Although Jorda’s chart is more accurate, approching two aspect of the Gans and Stern Model : the excludability environment and the complementary asset environment which allow us to analyze the competition situation more deeply on the market : illustrated by 4 generics situations : the attacker’s advantage, the reputation based ideas training, the greenfield competition, and the ideas factories. All of thoses situations could help any start-up dealing with the problem of lauching their invention and commercialize it theirself (the product market) or selling their invention to a partner that will commercialize it for, or with them. Daizadeh and others approach this point but Jorda’s doesn’t, limited by his binary system.
The approach of Daizadeh and Jorda have several common points, similitudes, but they differ in a crucial point, as Jorda prefers to be more concise, direct (binary system) and short, Daizadeh prefers the alternative of a wide scope leaving room for a multiple alternatives ( for example the situation whereas the score is between 45 – 75 ) : ” At times, values in the middle range (45–75) will result. Such a score suggests that it doesn’t really matter which approach is followed initially ”
Actually, a mix between patent and trade-secret is important in case of complex innovations : for examples the KFC, Coca-Cola recipe. “As illustrated by the previous examples, inventors of complex innovations face a rich set of strategies when it comes to protect their intellectual property. They may indeed choose between patenting and secrecy for each fragment of their innovation, which theoretically opens up a large number of combinations” But patenting is limited by two importants points :
1.” A strict enforcement of this utility requirement could prohibit the patenting of fragments of innovations.”
2.”A second requirement is that the invention show an element of novelty; that is, it must show some new characteristic that is not known in what is called the “prior art”, i.e., the body of existing knowledge in the technical field of the claimed invention. Hence, a strict interpretation of the novelty requirement could prevent inventors from patenting long held trade secrets.”
The point that I’m trying to make here, is to underline the accuracy of Jorda’s questionnaire on those 2 points quoted above. Jorda’s questionnaire is treating the deal between patenting and trade-secret keeping with an interesting point : why can’t we not let a trade-off situation ?
Both schemes cover a lot of common ground : legal issues, reverse engineering, licensing opportunity ectera. But why those two couldn’t be complementary ? According to the type of the product or the process, we can easily choose which model could suit it the better way possible, or even use both of them in complex situations.
The first and most obvious observation is that the roadmap proposed by Diazadeh et al. is in the form of a flowchart, with only binary yes/no responses, while that proposed by Jorda is in the form of a questionnaire, with a scale from 1 to 10. Therefore, in Diazadeh's roadmap, the answer to a single question could determine the course… Read more
The first and most obvious observation is that the roadmap proposed by Diazadeh et al. is in the form of a flowchart, with only binary yes/no responses, while that proposed by Jorda is in the form of a questionnaire, with a scale from 1 to 10. Therefore, in Diazadeh’s roadmap, the answer to a single question could determine the course of action to be taken, while in Jorda’s roadmap, the answer to each question only adds some weight in one or the other direction.
That said, there are a couple of areas where the two roadmaps agree with each other. Both agree that an idea that can be easily reverse engineered, or discovered independently should be patented (more accurately, in Jorda’s roadmap, the likelier that this situation can occur, the lower the final score, and hence, the higher the chances of patent being the preferred outcome).
One area where the two contradict is in the case of rapidly evolving technology. Diazadeh et al. suggest that a trade secret is a better idea, while Jorda suggests that a patent is a better idea (question 4 – is the commercial significance limited in time). The most significant area of contradiction is in the choice of questions itself. Diazadeh et al. place higher weight on questions related to technology, while Jorda considers questions on technology, marketing and legal aspects as equally important and as substitutes to each other. Finally, Diazadeh et al. present the possibility of a defensive strategy of publication, while Jorda suggests that for middle scores, it may not matter whether the choice is a trade secret or a patent.
The major difference mentioned above also makes the two roadmaps complementary to each other. If, for example, a particular idea can potentially be reverse engineered easily, Diazadeh et al. recommends patenting. However, Jorda’s roadmap also considers the possibility that the patent might not be upheld by the court. In cases where this distinction is not quite clear, Diazadeh et al. provide a firm recommendation where Jorda may suggest indifference. On the other hand, Jorda also provides for significant marketing or legal concerns to over-rule, say, a possibility of reverse engineering. Thus, it may be better to consider the recommendations of both roadmaps, and make a judgement call on which is the better approach, rather than deciding it based on any one alone.
The roadmap proposed by Dazadeh et al. is an effective tool to making decisions when the answer points more toward keeping the development a trade secret. That is, it works best when public disclosure is not necessary, the development is difficult to reengineer and technology is changing rapidly. However, it is when one or more of these conditions are not… Read more
The roadmap proposed by Dazadeh et al. is an effective tool to making decisions when the answer points more toward keeping the development a trade secret. That is, it works best when public disclosure is not necessary, the development is difficult to reengineer and technology is changing rapidly. However, it is when one or more of these conditions are not met that the decision becomes more tricky. Here is where the alternative method proposed by Jorda becomes more effective. First of all it takes into account not only the gains of patenting a development but also the potential losses that one faces should a competitor also arrive at the same development and patent it. Thus it weighs both the pros and cons of patenting an innovation. The commercial significance of a patented innovation may not hold long if the technology is evolving rapidly or the impact of the innovation is only limited. In such scenarios it is best to keep the innovation a trade secret rather than publicly disclose a patent. This feature is not captured by Daizadeh et al. Another important feature of Jorda’s method is the weightage assigned to each parameter instead of just yes/no answers. Thus, a scale can be developed based on which it is possible to judge mathematically whether patenting/trade secret or either can be followed. Finally, subtle questions which are frequently ignored like whether it is even possible to determine whether a competitor is currently using the development or an alternative to the development are also addressed by Jorda’s method. There appear to be no contradictions per se in the way the two frameworks have been developed. However, Jorda’s method appears more comprehensive.
On studying both the frameworks for deciding whether to go for a patent or a trade secret, the following observations can be made:
1. The fact that Jorda’s method uses a Likert like scale to measure the importance of each factor opens up the possibility of conducting very useful statistical analysis. For example, it would be possible to answer similar questions for… Read more
On studying both the frameworks for deciding whether to go for a patent or a trade secret, the following observations can be made:
1. The fact that Jorda’s method uses a Likert like scale to measure the importance of each factor opens up the possibility of conducting very useful statistical analysis. For example, it would be possible to answer similar questions for developments which were kept secret or patented in the past and develop some sort of regression algorithm to determine whether a given development should be patented or not.
2. Jorda’s method adds an interesting dimension to the decision making process by bringing in the competitive disadvantage that one would have by letting another competitor have exclusivity over the development. This is a better evaluative method on this parameter as it combines two of the questions raised by Daizadeh et al. namely, the fact that it is easy to reverse engineer/discover independently and that it has a high revenue potential. Thus it would be possible to weigh the importance of both factors before making a decision on whether to patent or not.
3. One important aspect which Daizadeh et al. neglects in their framework is the legal aspect. This is brought forth very succinctly in Jorda’s method. If the patent’s validity is not going to be upheld in court, then it makes no sense whatsoever to hold a patent even though the cost of doing so may be minimal. In addition to this Jorda’s method also accounts for the degree of control that one has in ensuring that the secrecy of the development is maintained. This is also very crucial because even though a trade secret might be invaluable to a company, if the information flow cannot be controlled, then it won’t stay secret for long. In such a case it is always better to go for a patent to ensure protection.
4. Question 5 of Jorda’s method and Daizadeh’s question on technology changing rapidly both points to the fact that it is better to not patent a development when it is easy to develop alternatives. However, it may not always be the right choice in such a situation. It depends very much on whether the process of development of a product is in question or the product itself is in question.
5. Both methods fail to address another important aspect in this debate and that is whether the development is highly beneficial to society or not. If the development happens to be a very crucial drug or medical treatment, then without question it cannot be a trade secret. However, the innovator can be protected by intellectual property rights by filing for a patent.
As a few have already pointed out, the road map proposed by Daizadeh et al. is clear, crisp and to the point. It basically is a set of questions requiring binary answers (yes or no) which on being provided would lead to a fixed solution (patent or trade secret or defensive publication). There is no grey area. On the other… Read more
As a few have already pointed out, the road map proposed by Daizadeh et al. is clear, crisp and to the point. It basically is a set of questions requiring binary answers (yes or no) which on being provided would lead to a fixed solution (patent or trade secret or defensive publication). There is no grey area. On the other hand, Jorda’s approach provides an option of answering on a scale of 1 to 10 for 11 questions. The individual question scores are added together to yield a total score which is then used to decide a patent or a trade secret. The latter approach is indeed more flexible and additionally, it keeps the door open for situations in which a patent or trade secret would more or less yield the same result. However, there is still the question of whether all the questions are equally important to merit the same weights in the total score. For instance, the article itself mentions that the question 4 need not be considered in some cases. Clearly this means that this approach is highly subjective in nature and would vary a lot depending on the specific issue at hand. On the other hand, the first approach is completely objective in nature and quickly yields a solution when the answers to all posed questions are straightforward. Thus, we can say that the two approaches are in that way complementary in nature; switch between the approaches as the situation demands.
One other difference clearly is the mention of defensive publication by Daizadeh which basically comes into the picture when revenue potential is lesser than the IP processing and litigation cost. That angle has not been covered by Jorda.
Question 1 of Jorda’s approach is covered by Daizadeh et al. as well and both advocate the same remedy that is patents in case of licensing opportunity/ commercial product (barring the defensive publication option as discussed earlier). Jorda’s approach dives deeper into issues related to commercial significance, competitive advantages/disadvantages and competitor response as proved by questions 2, 3, 4 and 11. This has not been accorded similar importance in the former approach. Questions 6 and 8 have been taken into account by Daizadeh as well. However Jorda has additionally considered the possibility of developing alternatives (Question 5). Questions 9 and 10 about legal hurdles have been included by Jorda. This perspective is somewhat lacking in what Daizadeh et al. have proposed. On the other hand though, Daizadeh’s approach does consider the effects of technology changing rapidly or it being in a completely new direction. Last but not least, question 7 to me represents a significant aspect that has been overlooked by Daizadeh.
Since protection of innovation in most cases involves huge stakes, I would recommend stakeholders to review using both approaches. Or Jorda’s approach could be enough but I would then add in the consequences of evolving technology to the analysis as well. However, in case of a quick fix, Daizadeh’s approach would be the best.
I would like to discuss a little bit more about defensive publication. This is a good alternative to patent and secrecy, especially for idea or concept which can't be patented. Indeed, to patent an idea, there are some rules to respect. The Belgian Government says:
"To be protected by a patent, an invention must be novel, inventive (show inventive activity), have… Read more
I would like to discuss a little bit more about defensive publication. This is a good alternative to patent and secrecy, especially for idea or concept which can’t be patented. Indeed, to patent an idea, there are some rules to respect. The Belgian Government says:
“To be protected by a patent, an invention must be novel, inventive (show inventive activity), have industrial applicability and be lawful.”
Unfortunately a lot of inventions don’t respect at least one of these criteria, so they can’t be patented. But authors would still like not to see competitors steal them their idea immediately after they discover it.
In Benelux, The Benelux Office for Intellectual Property (BOIP) decided to get around the problem by launching the i-DEPOT, “a legal means of proof that issues a date stamp for your idea or creation”.
Even if i-DEPOT doesn’t offer an Intellectual Property, it’s very useful for concept, model, prototype, etc. which can’t be patented. This is a proof, in case of conflict, that you have first this idea. The system is very well secured and nobody can access to your i-DEPOT. In this way, it gathers advantages from defensive publication and secrecy!
Secrecy it’s for me an option to use only in some case where you are sure (or almost, we are never sure not to be spying) nobody can’t discover it before you. Moreover, when you put your project on the market you are obliged to choose another form of protection. Secrecy is so a temporary and unsecured option. Despite that, this is often the chosen option because it’s free (you “just” need to be sure nobody can see you). I-DEPOT prevents you from spy when you decide to trade secret.
I think this way (i-DEPOT) should be much better known among SME or self-employed workers. This is easier than a patent at the beginning of their activities, very much cheaper, and you can renew the contract as time as you want.
It’s obvious that for big companies, for great new idea, etc. this is not a right alternative. But I’m sure there are at least as many SME/self-employed workers concerned about it as companies for which it’s unsuitable.
A great idea to develop so…
Daizadeh & All (2002) and Jorda (2007) both consider that the choice between the two options for IP protection, i.e., patent and trade secret, depends on the nature of the invention and the context.
The main difference lies in the decision-making process. While Daizadeh & All proposed a “Yes or No” questionnaire that sequentially guides the inventor towards an option, Jorda… Read more
Daizadeh & All (2002) and Jorda (2007) both consider that the choice between the two options for IP protection, i.e., patent and trade secret, depends on the nature of the invention and the context.
The main difference lies in the decision-making process. While Daizadeh & All proposed a “Yes or No” questionnaire that sequentially guides the inventor towards an option, Jorda presented a questionnaire with several questions and a scale system (common to all aspects of the invention) such that the optimal choice is linked to the sum. As such, Jorda’s classification allows linear substitutions of an invention’s characteristics even if they are related to different functions (Marketing – Technical – Legal).
For me, Jorda’s questionnaire is less categorical and reflects more the fact that these two options are complementary to some extent and could co-exist in a hybrid strategy. His questionnaire is more detailed (particularly regarding patents associated costs) and gives more margin to the inventor.
Daizadeh & All considered a third option which is a defensive publication – when the public disclosure is necessary or the technology is easy to reverse engineer, and if the potential market revenues are lower than the patent and associated costs. Additionally, they look deeper into the technology area by taking into account its novelty in the decision process.
From my perspective, the two approaches are complementary in the sense that Daizadeh & All’s way is simple and radical; and Jorda’s is detailed and help determining the degree of several characteristics.
As the IP protection’s choice would have great consequences on how the invention would be managed and since the stakes could be high, the inventor should take the time to properly assess the different options, and consider both ways. On the one hand, going through Jorda’s questionnaire would allow him/her to identify which option is most likely suitable (in average). On the other hand, Daizadeh & All’s questionnaire would indicate what should be chosen with respect to a particular aspect of the invention – and more importantly what should not be done (even if the outcome of Jorda’s questionnaire favours it); it also offers another alternative which is to make the invention not patentable by competitors nor protectable as a trade secret.
Following the order suggested, I will start by mentioning the common points between both frameworks, then I will analyze the conflicting ideas and, afterwards, conclude with the points on which they complement each other.
OVERLAP
I could notice mainly two consensual views shared by the works of Daizadeh et al. (2002) and Jorda (2007). They are:
- It is mentioned in both… Read more
Following the order suggested, I will start by mentioning the common points between both frameworks, then I will analyze the conflicting ideas and, afterwards, conclude with the points on which they complement each other.
OVERLAP
I could notice mainly two consensual views shared by the works of Daizadeh et al. (2002) and Jorda (2007). They are:
– It is mentioned in both analyses that the facility of obtaining precious information by reversal engineering (even though the authors disagree on the relative importance of this fact, as it will be referred in the “contradicts section”) and the likelihood that the competitors have to reach the same invention are factors that should favor firms to a patent creation.
– Even though both works do not agree on the best strategy that firms should follow when the inventions are endowed by reduced commercial impact (Daizadeh et al. (2002) suggest the defensive publication, whereas Jorda (2007) the trade secret), they both state that the not adoption of a patent is a prudent measure.
CONTRADICT:
Several are the divergences existent between the publications. I can highlight the following:
– The most obvious difference relies on the fact that Daizadeh et al. (2002) suggest, besides the trade secret and patent, “defensive publication” as a possible strategic decision that firms can adopt.
– The roadmap proposed by Daizadeh et al. (2002) portrays the adoption of a patent as a strategy that should implemented under the majority of the circumstances, being quite special the situations on which trade secret should be perceived as the best response. Jorda (2007), however, adopts a more flexible approach, in the sense that several are the combination of scenarios (i.e. several are the combination of the answers for the form) on which the adoption of secrecy should be seen as optimal.
– Daizadeh et al. (2002) asserts that there should not be the possibility of choosing to not patent if the product is easily accessed by reversal engineering. The same conclusion is not verified by Jorda (2007).
– The work of Jorda (2007) explores more in depth the impact that actions of competitors can assume. Firstly, the author highlights the negative impact that can arise if a competitor decides to patent an invention that your firm was keeping as a trade secret. Secondly, when deciding about patenting, firms should take into account the possibility that competitors may have access of precious information disclosed by the inventor though two channels: either by a patent that does not preserve sufficiently their intellectual property (as addressed by question 5) or by lack of confidentiality further than beyond (mentioned in question 7).
– The influence that intensity of technological changes is seen as a driver of different nature by the authors: for Daizadeh et al. (2002) ephemeral technical mutations should bias firms to decide on trade secrets, whereas patents would be better chosen for Jorda (2007).
– Daizadeh et al. (2002) address to the technological stage of the industry as factor of decision making, something absent on the publication of Jorda (2007).
COMPLEMENT
Regarding the complementary between of both studies, two are the main points to be emphasized:
– Jorda (2007) presents a deeper and more complex framework related to legal issues involving patents, being considered three dimensions: it importance of well designed juridically; firm’s capability to control the flow of important information within the firm and, finally, the degree of enforceability of the patent. Daizadeh et al. (2002) offers a more generic view by summarizing the discussion of legal questions to what they refer as “litigation costs”.
– Both studies consider a myriad of elements to support the process of decision-making: while Jorda (2007) presents a more detailed approach, Daizadeh et al. (2002) opted to a more parsimonious framework.
These two authors present in a different way how to choose between patent or trade secret.
The roadmap proposed by Daizadeh et al. is enough easy and quick. It consists by response to questions by yes or no and find a clear response what to do, if it’s better to deposit a patent, publish it or keep secret. This … Read more
These two authors present in a different way how to choose between patent or trade secret.
The roadmap proposed by Daizadeh et al. is enough easy and quick. It consists by response to questions by yes or no and find a clear response what to do, if it’s better to deposit a patent, publish it or keep secret. This 6-step approach is little detailed and contains basic questions.
On the other hand the roadmap proposed by Jorda contains 11 questions, each including a scale between 1 to 10. This model seems directly to be more detailed but in same time is more flexible, able to respond to more specific questions (in relation to marketing, technical or legal categories) in order to have a more precise answer. Anyway, results between 45 to 75 presents no difference which solution take patent or trade secret. This means that the chosen decision should not be wrong. However results in the middle are large enough and I don’t think that there is no consequence on the decision taken.
One difference in these models is the question about “technology time”, in his model Daizadeh recommend use secret in contrary to Jordan who focus rather on patent protection.
These two roadmaps imply some similarities. For example, question about “subject of licensing” and “discover independently” or question about “reverse engineer” which positive responses are in favor to a patent.
These two roadmaps are also complement and there is no better model to use. According me, each has advantages, Daizadeh benefit from his ease, speed and clear answer. About Jorda, his model takes into account a more detailed approach which is longer and more complex to analyze. Moreover, with Daizadeh each answer is important because has a strong influence on the decision, on the contrary to Jordan where responses have more flexibility and each answer has no direct impact on the final decision.
Certainly we can use these models together to have better view to be sure that our decision was confirmed by the two. Yet we can use one or other model separately. I think the choice between which model take depend on the characteristics of the products, invention,… In some cases Daizadeh roadmap’s is sufficient to take a decision and it’s not necessary to use Jorda’s roadmap. But in some cases, if invention is more complex and need to ask more complex questions, it’s safer use these two models together, and in some circumstances opt for a mix patent and secrety.
First, in the Daizadeh et al’s roadmap, first step is about public disclosure only. No more words. What about the exclusivity and commercial aspect? What about competitors? Jorda’s roadmap takes into account these lasts questions (question 2 and 3) and goes further with question 7: will a public disclosure cause discovering of other information? In this case, Jorda completes the… Read more
First, in the Daizadeh et al’s roadmap, first step is about public disclosure only. No more words. What about the exclusivity and commercial aspect? What about competitors? Jorda’s roadmap takes into account these lasts questions (question 2 and 3) and goes further with question 7: will a public disclosure cause discovering of other information? In this case, Jorda completes the Daizadeh et al’s roadmap.
Then, in my opinion, both roadmaps overlap each other concerning legal side but Jorda’s roadmap goes further for this point. On the one side, Daizadeh et al advice to favor patent if the potential revenues are greater than IP processing and litigation cost (step 6). From another side, Jorda explains that this point is not negligible. He also takes in account the situation where a company is unwilling to sue a competitor for patent violation (litigation cost). But Jorda goes further in his study and he takes in account the dissemination of information within the company, because it should be a threat for the innovation. He also asks a question about detecting infringement (question 11). One more time, Jorda’s roadmap is more accurate and goes more deeply in legal problems a company meets.
In addition to this, in the Jorda’s roadmap, we find a question about the commercial life of a product (question 4). In my opinion, we can compare this question with the step 3 of the Daizadeh et al’s roadmap about technology changing. We can associate commercial life with technology changing.
In the jorda’s roadmap, there are some points of view. First, we read that some writers have suggested to favor a patenting approach for a development (or idea) with a short commercial life and a trade secret approach for a long life development. Although it is in my opinion logical (for instance smartphone industry with its patent war and its fast technology changing), Daizadeh et al’s give another conclusion: they suggest that if a technology is changing rapidly, then a company should keep the trade-secret.
As Jorda explain, this is a difficult question because “life span is not a particularly useful criterion since it depends on factors unrelated to the development itself. Estimating the future lifespan for a product under development may also be a highly subjective matter. In some circumstances this question might not have to be considered.” (comment of the question 4 in the Jorda’s report).
Concerning new area of technology proposed by Daizadeh et al, there is no suggestion about this in the Jorda’s roadmap.
Finally, about reverse engineering and licensing opportunity, both models cross each other.
To sum up, in my opinion the Jorda’s roadmap is more accurate. But it is interesting to keep an eye on the Daizadeh et al’s roadmap before taking a decision. Furthermore, it is important to keep in mind the industry in which the company performs in order to adapt conclusions of each roadmaps to the characteristics of the industry concerned.
The two roadmaps overlap each other for some elements. They both say that if the product is likely to be licensing, patent is a better protection.
In the 6-step roadmap they don’t speak about a limit of time but well about the technology evolving fast. We can think that it’s a bit the same of saying that the innovation is… Read more
The two roadmaps overlap each other for some elements. They both say that if the product is likely to be licensing, patent is a better protection.
In the 6-step roadmap they don’t speak about a limit of time but well about the technology evolving fast. We can think that it’s a bit the same of saying that the innovation is limited in time because when the technology evolves fast it means that the product will be worthless quickly. In both models they say that if the product can be reverse engineered it’s better to patent our product.
The two roadmaps are different because one is a way in 6 steps. It’s a kind of path you have to accomplish to arrive to your answer. All the step are linked and every step are important. It’s the path that is important to know if it’s better to use secrecy or patent. The other roadmap is a list of independent questions and your results depend on the total score you get. All the score together are important but not the score for each question takes independently. Besides the second model is more complete. It takes more elements into account.
The two models are complements because the first way of choosing with the 6 steps is a better way to have a correct answer but the second model with the 11 questions is more complete. So we can use both to be sure our decision is the best.
The two methods differ in certain aspects:
Firstly, they do not focus on the same aspects. Daizadeh et al. center their analysis only on the technologic aspect as a source of revenue and strategic advantage. Jorda on the other hand is more subtle in his approach as he defines in every question the subject of his analysis and therefore broadens his… Read more
The two methods differ in certain aspects:
Firstly, they do not focus on the same aspects. Daizadeh et al. center their analysis only on the technologic aspect as a source of revenue and strategic advantage. Jorda on the other hand is more subtle in his approach as he defines in every question the subject of his analysis and therefore broadens his horizon, talking not only about the process but also about the final product, culture (information), trade secrets, … A larger field of interest renders the analysis more complete as it doesn’t reduces the competitive advantage to a mere technology but includes a more larger scope of aspects that could be worth protecting.
Secondly, Jorda is richer in the descriptions of the situations which could modify the decision to purchase a patent or not. For example he describes a situation where patenting could benefit a company not based on the technology or the market it evolves in but based on the internal structure of the company, where trade secrets could leak due to a lack of control on the dissemination of information. He also addresses the links that may exist between competitors as described in question three for example.
Finally, Daizadeh et al.’s methode is more practical as it shows a clear path based on the answers of the six questions. This method is easier to implement as it leads to the answer to the question the manager is asking himself “Whart should I do”. By following this canvas a decision can easily be taken and implanted. Jorda’s method on the other hand gives an insight about the situation but doesn’t gives any clear answer whereas to yes or no there should be a patent. This is mainly the fact because there’s no ranking in the questions (no path) so in the event that the mean is at fie or six, no decision can be taken.
One last contradiction is the answer to question three (Daizadeh et al.) and four (Jorda). Whereas question three is given a strait answer, saying the benefits won’t outweigh the costs and risks of patenting. Jorda is less direct on the matter saying it depends on the situation and not positioning himself on the matter.
On the other hand both methods have some overlaps for example questions one, two and five (Daizadeh et al.) are present in Jorda’s analysis in the exact same way. They address the same issues.
All in all I would say that both method complement each other neatly. Daizadeh et al.’s enables a quick analysis of the situation and decision making which could be interesting to guide managers. Jorda’s method on the other hand has the advantage of broadening the scope of the analysis and taking into account more factors. The downfall of the method is that it might not be possible to generate a clear answer to whereas a patent is needed. By combining the two a richer analysis of the situation can be provided giving more tools to the decision-maker.
There are several ideas put forward by Daizadah et al (2002) and Jorda (2007) that overlap and complement each other, but there are also several important differences in between both models.
The first noticeable difference is the fact that Jorda puts no emphasis at all on the importance of technology in whether a development should be kept secret or if it… Read more
There are several ideas put forward by Daizadah et al (2002) and Jorda (2007) that overlap and complement each other, but there are also several important differences in between both models.
The first noticeable difference is the fact that Jorda puts no emphasis at all on the importance of technology in whether a development should be kept secret or if it should be patented. This is quite interesting given that a third of Daizadah et al’s model of decision is based around technology, as he considers whether or not it is fast changing area of technology and whether it is a new area of technology.
On the other hand, Jorda’s roadmap is based a lot more upon the consequences of a potential patent or trade secret whereas Daizadah’s model is more of a descriptive one. Five of Jorda’s questions look into the consequences of the decision to patent a product/idea or to keep a trade secret: questions 2, 3, 7 and 10 all do so. Daizadah however only has one question that looks into a consequence: he asks about whether or not the potential revenue would be greater than the cost of patenting an idea.
Jorda is far more detailed in this sense has he tries to understand the competitive advantage or disadvantage in the case of exclusiveness, the consequence of disclosure, and the dissimilation of information from within the company.
As for the similarities between both models, we can point at first of all that there are two questions that come up in both roadmaps. The first question in Jorda’s eleven-question model asks if the product is a commercial one of if it is subject to licensing. This same question comes up in Daizadah’s map aswell, even though it isn’t the first question in his model. The second question that appears in both models is one regarding the possibility or not of reverse engineering the idea or product.
The final observation that I would like to make is of a fundamental difference between Jorda’s and Daizadah’s designs; on the one hand Daizadah offers a very binary map, where each question is answered either by yes or no. This means that there is a very clear route to each of the three potential outcomes, while it does also mean that the model is a very rigid one.
Jorda’s approach is a lot more detailed and flexible; he offers the possibility of answering the eleven questions on a scale from one to ten, and the result isn’t a unique one as is the case in Daizadah’s map. Jorda sees the potential outcomes as complementary and overlapping; this means that one solution, may that be patenting, keeping a trade secret or making a defensive publication, doesn’t necessarily exclude the other ones.
In comparing the two approaches the first thing I noticed was the difference in the complexity of questions the roadmaps proposed. I find the roadmap proposed by Daizadeh er al. more direct because the questions require “yes or no” answers whereas the questions proposed by Jorda ask to give a precise score to the different aspects that are… Read more
In comparing the two approaches the first thing I noticed was the difference in the complexity of questions the roadmaps proposed. I find the roadmap proposed by Daizadeh er al. more direct because the questions require “yes or no” answers whereas the questions proposed by Jorda ask to give a precise score to the different aspects that are investigated.
As for the questions proposed, the two approaches are quite different. They analyse obviously the same topics but asking slightly different questions. I think that the questions of Jorda are more technical and touch a wider area of topics. In the Jorda’s roadmap questions are divided into marketing, technical and legal categories, whereas in the tool provided by Daizadeh questions are not so clearly distinguished and there isn’t an analysis of legal aspects. The two approaches only in part overlap. For instance they both investigate the aspect of reverse engineering and independent discovery (step 2 of the Daizadeh’s roadmap and questions 6 and 8 of Jorda’s roadmap). Also the outcomes of these cited questions overlap because for both approaches if reverse engineering is easy and it is likely that others can discover the innovation, patent is more favourable.
I can say that the approach of Jorda complements the one of Daizadeh in the sense that it completes the analysis with more detailed questions but the opposite is not true. Daizadeh covers for example the topic of the novelty of innovation that is not studied by Jorda but I think that this is not enough to consider the approach of Daizadeh as a complement of the Jorda’s one. The legal aspects are considered only by Jorda. Daizadeh investigates what the possible litigation costs are but only under an economic perspective comparing them with the potential market revenues. Also for the questions regarding market, the roadmap of Jorda complements the Daizadeh’s one because Jorda studies, for example, more in detail the competitive advantages of maximizing exclusivity for the innovator, and the disadvantages given by the maximization of exclusivity by the competitors.
As for the outcomes, the roadmap proposed by Daizadeh et al. is more complete as it involves three alternatives of choice (trade secret, patent and defense publication) whereas the roadmap proposed by Jorda involves two alternatives: trade secret and patent. Anyway the approach of Jorda can lead to an intermediate result that Jorda interprets as “it doesn’t really matter which approach is followed initially”; anyway, according to me it can be interpreted as leading to a choice that can involve a mixture of patent and trade secret protection.
I don’t think that the two approaches in some sense contradict each other because, comparing the questions, even if they are different, they lead to the same outcome if you answer in a coherent way to them.
According to me both approaches have advantages and disadvantages. The Daizadeh’s approach is more direct and permits a more quick analysis of the problem, but, being more rapid is also less detailed and can have the problem of skipping important subjects. On the other hand, the approach of Jorda permits a more detailed analysis but it is also more problematic. Giving a precise score to this kind of questions requires a detailed analysis of the problem and the definitions of specific thresholds that may be not so easy to find. It has to be specified what the various scores indicate. For instance, for questions 11, all the levels of difficulty have to be determined in order to decide where to position the innovation on the scale; and the same is also for all the other questions.
In conlusion, I argue that the roadmap of Jorda is more detailed and complete and therefore, according to me, it gives a more useful instrument that allows a more deep analysis of the problem.
According to Jorda, patents protect inventions and trade secrets protect collateral know-how. Moreover, these IP rights categories are not mutually exclusive but effectively complementary and even mutually reinforcing. They are interdependent because most of R&D data, results and associated collateral know-how for any innovation cannot be disclosed in a patent appli-cation. Corresponding to the author, the question is not so… Read more
According to Jorda, patents protect inventions and trade secrets protect collateral know-how. Moreover, these IP rights categories are not mutually exclusive but effectively complementary and even mutually reinforcing. They are interdependent because most of R&D data, results and associated collateral know-how for any innovation cannot be disclosed in a patent appli-cation. Corresponding to the author, the question is not so much whether to patent or to keep the innovation secret, but rather what to patent and what to keep a trade secret.
The approaches for the two proposed roadmaps are slightly different. Since the one proposed by Jorda is a set of questions where the responses are totaled in order to decide whether an innovation should be patented or kept secret, the one of Daizadeh et al. is more like a decision tree following six consecutive steps which result either in secrecy, in patenting or in defensive publication.
However, both schemes complement each other. On the one hand, Daizadeh’s approach is more superficial but clearer and easily results in a decision. On the other hand, Jorda’s methodology considers a larger set of more detailed questions including competitive advantage (questions 2-3), the ability to develop alternatives (question 5) and legal constraints, i.e. the control over the dissemination of information inside a company (question 10) or the ease of detecting infringement (question 11). These aspects are unfortunately disregarded by Daizadeh et al. The later also include the innovativeness of the technology area (step 4).
There is also some overlapping. Both roadmaps treat the question of public disclosure. Although Jorda raises the question about the disclosure of unprotectable information (question 7), Daizadeh et al. have a more general approach since they only look at the necessity of public disclosure of a patent (step 1). Moreover, both schemes suggest patent protection if the innovation can be easily reverse engineered, discovered independently (questions 6 & 8; step 2) or subject of licensing (question 1; step 5).
The roadmaps contradict each other in the question about the limitation in time. Although Daizadeh et al. recommend a patenting approach for a short commercial life (question 4), Jorda favors trade secrets for the same life span (step 3).
In order to facilitate companies the choice between secrecy and patenting, both roadmaps should be converted into one scheme, including the convenience of the Daizadeh’s approach and the different aspects of the Jorda’s approach.
There are several ways to compare the two schemes, as they differ in their extent as well as in some aspects.
The roadmap proposed by Daizadeh et al. starts off with the necessity of public disclosure as the first question. It also incorporates issues concerned with the idea in question itself, like the possibility of licensing the invention or the threat… Read more
There are several ways to compare the two schemes, as they differ in their extent as well as in some aspects.
The roadmap proposed by Daizadeh et al. starts off with the necessity of public disclosure as the first question. It also incorporates issues concerned with the idea in question itself, like the possibility of licensing the invention or the threat of possible reverse engineering, in both cases promoting to patent the invention. Afterwards there are some issues on the list that are not concerning the innovation itself but the area of technology it lies within. In case of a quickly evolving technology area, the roadmap proposes not to patent the invention and instead to keep it as trade secret. The unique aspect which sets the two schemes apart is the last question, promoting to publish the invention in technical or trade journals in case the potential market revenues outweigh the patent and associated costs. This represents a rather fast and uncomplicated way to claim IP rights for the invention, while at the same time potentially preventing competitors from filing patent claims on a similar idea themselves.
However, the second roadmap as proposed by Jorda goes a step further, partly because of the larger number of questions which grant the scheme a wider scope. In particular, it incorporates a bigger amount of questions which propose to keep the invention as a secret. For instance, it takes a deeper look at other consequences of the idea’s commercialisation as a product, thus considering possible competitors’ decisions to develop alternatives to the product once it has been published. In addition, the roadmap considers the setting in which it is difficult for the company to determine whether or not competitors are using the development, if so also promoting to keep the idea a secret. At last, the roadmap proposes to think about possible lawsuits rising up after the commercialization of the innovation or during filing the patent. They decrease product revenue and in doing so, again, provide a clear incentive to keep the respective innovation a trade secret. However, other stakeholders are also considered. For instance, Jorda proposed to think about the inner structure of the company and if a innovation really can be kept as a secret within the company borders with respect to employees and all other persons than are involved in the development process.
Of course, the two roadmaps overlap in certain areas. Common issues mentioned in both roadmaps are the threat of possible reverse engineering once the development has been disclosed to the public as a commercial product, as well as the opportunity of licensing which requires the respective invention to be patented first. Those aspects, both advocating the patent solution, derive from their common prerequisite: the public disclosure of the development.
In my opinion, I consider the roadmap proposed by Daizadeh et al. to have integrated a more cleanly separated set of questions covering most of the areas where issues might arise, whereas it lacks some of the specificity of Jorda’s approach. The ideal roadmap might be a combination of those two.
Comments for Secrecy vs. patents. How to choose?
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It is possible to protect its innovation or creation in several ways, including intellectual property rights (in particular, by copyright or a patent). But it is also possible to protect its innovation by secrecy, that is to say, keeping secret the constituent elements of its innovation, or its manufacturing process. The best-known and most commonly cited example of secret protection is the Coca Cola formula. This has remained secret since the creation of Coca Cola in 1886, shared with a very small group of people. Another example which is that of Michelin; for a long time, Michelin has protected its tires and technology associated with secrecy and not patents.
The advantage of protecting a creation or an innovation by secrecy rather than by patent lies mainly in the fact that secrecy gives theoretically infinite protection over time, whereas a patent confers only very limited protection in the time (20 years). Clear: as long as a company is able to keep secret its creation or innovation, it is protected by secrecy; while with a patent, it is obliged to disclose its invention and features that will be published and therefore known to competitors. And after 20 years, competitors will be able to easily apply the teaching of their patent. In other words, if it is possible to keep a creation or a secret innovation, maybe it is better not to take a patent, because we can, based on a secret strategy, enjoy more protection. long (that 20 years) .If, on the other hand, it is considered that it will be difficult to keep a creation or a secret innovation then it is better to take a patent to enjoy an exclusivity during 20 years.
As summarized by Michelin, explaining that their policy is now to patent everything that is seen and everything that can be reverse engineered and keep the rest secret.
The question of whether it is better to protect a creation or an innovation by secrecy or patent law is complex, and needs to be the subject of a very careful and thorough analysis. To be able to solve it it is necessary in particular to wonder and by put the important questions to be posed:
• the life of this creation or innovation (very short or, on the contrary, very long?);
• on the patentability of this creation or innovation (if it is patentable, both options are open, if it is not, the patent is excluded);
• on the value of this creation or innovation?
• the possibility of reverse engineering by competitors (if reverse engineering is possible, protection by secrecy is unfavorable).
sources:
Show less-encyclopédie de l’innovation p 323 to 325.
-https://www.inpi.fr
Choosing the protection of trade secrets over patents is not risk-free,however. While a patent will only remain in effect for 20 years or less,,the protection it provides is considerably stronger. All in all,a company must remain vigilant about protecting its secrecy bearing in mind that patents are way more important to be protected too.!!!
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It is absolutely clear, that if the invention is patentable, you need to take a difficult decision to choose a possible protection option:
• patent the invention;
• keep it in the mode of commercial secrecy;
• or reveal its essence (what is called a defensive publication), thereby creating the conditions under which no one can patent this invention, as it will become a “public domain”.
This article helps to understand not only what type of protection to choose, but also how to do it. There’s why two roadmaps are proposed for the analysis: the one by Daizadeh et al., in 2002, and the other one by Jorda, proposed a little bit later, in 2007.
Comparing both of them, there are some differences: in the presentation and also in content. The Daizadeh’s roadmap is more visual and graphical, composed by 6 steps approach. The Jorda’s roadmap is composed by 11 questions, that are arranged by function: marketing, technical, legal (and scales for each of them). The Daizadeh’s roadmap analyse the possibility to choose not only between patent or trade secret, but also a defensive publication. From this point of view, the Jorda’s guideline is very precise just for two roads: patent or commercial secret. The roadmap proposed by Karl F. Jorda is more complex and includes some questions of legal topics (absent in the other one): validation by the court, the issue of inherent enforceability. It takes in consideration competitive advantages and disadvantages concerning exclusivity.
The two guidelines have some common points, for example: the reverse engineer questions and independent discovery, the public disclosure questions and the subjects of commercial significance, limited in time (or how quick technology actually develop). They have a lot in common simply because they have the same goal: to analyse which strategy to choose: patent or trade secret. The purpose of the patent and commercial secret is the same: to prevent the use of innovations by competitors and to benefit from monopoly use. But methods to protect are different: patenting involves the disclosure of information and further protection, including the right to prohibit and use this decision without the consent of the patent holder under the threat of prosecution. A trade secret implies protection through secrecy. (Nothing is disclosed, but in the case of disclosure or independent discovery, rights are effective as long as confidentiality is maintained.)
So, the two roadmaps do complement each other. The Daizadeh’s roadmap is more general and Jorda’s roadmap is more complex and structured. If a manager has to choose between the two models, he better begins with the Daizadeh’s guideline (to have an abstract idea of the solution) and then switch to the Jorda’s guideline (to have a more precise positioning).
Sources:
Show lesshttp://www.iphandbook.org/handbook/ch11/p05/
http://www.wipo.int/patents/en/
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The patent of invention is the subject of a title established and issued by institutional bodies conferring to its holder, a monopoly of exploitation on an invention for a limited time to twenty years and in a determined and circumscribed territory.
This mode of operation, generating a private and exclusive right to its depositor and his eventual subsequent licensees, is therefore primarily based on the revelation of knowledge and their technical implementation. These data are therefore accessible to the general public and at the end of this period of exclusive exploitation, they fall into the public domain, allowing anyone to freely exploit them.
If surprisingly for such a successful right, the Code of Intellectual Property does not give us a definition of the patent, it is nevertheless possible to affirm that it is the result of an effort of intelligence, intended to produce a technical solution to a previously unresolved technical problem. It is therefore an applied creation.
The company’s overriding goal of maintaining a patent system is often touted as an incentive for innovation, as indicated by Kenneth Arrow’s early work on the patent. This is only partially correct because the incentive to innovate is only a side effect of the system. The propensity to innovate is in the human nature of reservation systems of the fruits of innovation. Many areas of human activity are teeming with innovation without the need for a patent. The real challenge of offering patent protection is public disclosure of that knowledge. The justification of the patent system must be sought in the commitment of the person filing the patent application to bring his invention to the attention of the public.
In the context of industry competition, it is not uncommon to see companies file false patents, R & D work that has proved ultimately fruitless, but likely to induce the competitors interested in the innovations of the inventor. Thus, in the field of patents, and with regard to legal strategies of economic intelligence, it should be noted that this tool can be converted into a weapon directed against competitors. Beyond the legal protection conferred on patents, the fact remains that some companies are reluctant to disseminate their technical knowledge skillfully and for a long time.
However, if a patent is initially a blank sheet on which are affixed the technical and industrial claims, they must nevertheless be necessarily explicit. By doing so, the applicant cannot voluntarily impinge on data that he would have liked not to disclose.
Therefore, for these reasons in particular, but still for reasons of cost and exploitation, some commercial companies still prefer business secrecy to the patent.
On the other hand, these same companies have sometimes been able to initiate R & D work, which is long and expensive, but which has not succeeded and whose results are not up to the expectations and efforts made.
But for all that, and knowing that it is opportunistic, the company will not for all that give up patenting the work leading to a technical impasse, knowing full well that the competitor will scrutinize the alleged claims and perhaps be inspired by them. A patent can therefore be used maliciously as a technological and economic lure.
Also, the secrecy of inventions, beyond the time necessary to develop and develop the inventive idea, carries a significant risk of delay in harvesting the benefits that it can reap from innovation, which can go until the total sterilization of it.
The natural tendency of the inventors and entrepreneurs of the competitive field is to keep as long as possible the results of their research, so as to avoid being robbed and lose all the economic advantage they can represent.. Even today, Coca-Cola and Ferrero have their manufacturing secrets intact.
All surveys of business leaders show that secrecy remains the mode of protection considered most effective by a large majority of them.
Just behind is the protection offered by the technological advance: being the first to put a product on the market gives a competitive advantage that suffices for many companies. But it must be clearly seen that this mode of protection also relies in a certain way on secrecy, because it speculates on the time and effort it will take to access the knowledge contained in the product marketed and the deadlines involved in the industrial use of knowledge as well.
The patent, as a method of protecting innovation, is far behind.
However, a nuance is necessary because some branches of industry do not lend themselves to extensive use of secrecy and cannot be content with the only technological advance to make the profitable investment. The relative ease of reverse engineering operations and the low cost of manufacturing, not to mention the virulence of the actions of what is often called economic intelligence, which are all factors that can make illusory or inefficient the use of secret over a sufficiently long period.
In the branches concerned, recourse to the patent is very often an indispensable precaution. In these patent-intensive areas, there are traditional industries, such as chemistry and pharmaceuticals, as well as new industries with high renewals, such as information technology, telecommunications or biotechnology. This is where the deal proposed by the company makes sense and produces its best effects.
Moreover, apart from the patent and the secret, another concept called defensive publication can be brought to light. The purpose of the defensive publication is to convey to the public the details of an invention in order to block patents related to the guiding idea. Defensive publication is advocated when the negative effects of secrecy and patent for our invention arise.
Finally, Authors have therefore advocated proceedings s to make the optimal choice for the protection of innovation. Daizadeh et al highlighted in 2002 a roadmap to answer 6 questions related to protection and allowing innovators to inform their opinion when choosing between the patent or the secret.
Later, Jorda establishes in 2007 a new line of conduct which proposes a roadmap presented in 11 questions where the innovator will answer by a numerical data in order to refine his choice concerning the attribution of the patent or the secret. According to Jorda, the patent and the secret would allow a powerful protection. Patents and trade secrets are not incompatible. On the contrary, they can complement: patents protect inventions and trade secrets protect collateral know-how. The joint use of patents and trade secrets in a synergistic way results in powerful exclusivity.
In my opinion and after analysis of the information, it seems undeniable that the Patent VS Secrecy approach is too simplistic and that the real question to ask is “what will the patent bring me compared to what it is going to make me lose? ” . The best solution appears as a combination in time of the two modes of protection with the secret first, and then the patent as shown in the example of the Ecke family and their Poinsettias flowers.
Sources :
Show less– https://docs.google.com/viewer?a=v&pid=sites&srcid=ZGVmYXVsdGRvbWFpbnxpbm5vdmF0aW9ubGF3ZWNvbnxneDo2NzgzMDgxZjNhZTRmZjMw
– https://www.inpi.fr/sites/default/files/le_brevet.pdf
– https://www.inpi.fr/fr/comprendre-la-propriete-intellectuelle/les-autres-modes-de-protection/le-secret
– http://www.wipo.int/sme/fr/ip_business/trade_secrets/patent_trade.htm
– https://www.fredericlejeune.be/protection-par-le-secret-ou-par-le-brevet/
– http://www.asrc.fr/fr/wp-content/uploads/sites/2/2017/04/ASRC_FocusPI-num8-web.pdf
– https://fr.wikipedia.org/wiki/Enveloppe_Soleau
– https://docs.google.com/viewer?a=v&pid=sites&srcid=ZGVmYXVsdGRvbWFpbnxpbm5vdmF0aW9ubGF3ZWNvbnxneDo2NzgzMDgxZjNhZTRmZjMw
– file:///C:/Users/pariz/Downloads/economiepublique-389.pdf
– https://www.inpi.fr/fr/valoriser-vos-actifs/faire-vivre-votre-brevet/se-proteger-l-etranger
– http://www.blog-illusio.com/article-droit-des-brevet-et-innovation-114033029
– Livre : Droit de la Propriété Industrielle, Edition Dalloz
Very thorough comment; thanks.
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Dans un premier temps, j’aimerais pouvoir noter la différence certaine à première vue de ces deux feuilles de route. Effectivement, la feuille de route de Jorda quant à son étendue et son nombre de questions semble être plus précise et mieux structurée que la feuille de route des auteurs Diazadeh et al qui elle ne compte que six étapes, mais qu’en est-il réellement ?
Pour pouvoir répondre à cette question et savoir quelle feuille de route est la mieux adaptée pour qu’un agent économique puisse répondre à la fameuse question réputée dans le domaine de l’innovation brevet ou secret ?, nous verrons dans un premier temps, les points sur lesquels ces deux feuilles de route se rejoignent et arrivent aux mêmes conclusions, dans un second temps nous étudieront les points sur lesquels elles se complètent et pour finir nous verrons les points sur lesquels ces feuilles de route se contredisent.
Tout d’abord, avant toute chose, j’aimerais noter que la publication défense n’est que très peu conseillée par ces deux feuilles de route. Il me semble pourtant intéressant de noter les avantages que ce type de pratique permet. Effectivement, la publication défensive permet à des entreprises de « contre-attaquer » de futurs possibles brevets qui lui conféreraient une sorte de barrière à ses futures innovations. Ce principe permet aux chercheurs de se garantir, un libre accès à ces innovations qui seront grâce à ces publications défensives tombées dans le domaine public. De plus, ce type de pratique confère un second avantage qui est celui de ne pas supporter les coûts de mise en place de brevet qui s’avèrent la plupart du temps très onéreux et qui pour certaines innovations ne sont pas à la hauteur des moyens engagés.
Je pense donc que ce moyen de protection devrait être reconsidéré, car il permet de faire face à différentes difficultés.
Ces deux feuilles de route se chevauchent concernant un sujet particulier qui est celui de l’ « ingénierie inverse », effectivement ces deux feuilles de route semblent se mettre d’accord sur ce sujet. En effet, ces deux modèles considèrent que si l’ « ingénierie inverse », c’est-à-dire la découverte par les autres entreprises des différentes innovations mises en place par la société innovante grâce à une étude des différents produits, est forte et plausible alors ils considèrent qu’il faut que l’entreprise mette en place un brevet.
De plus, ces deux analyses traitent d’un même point qui est celui de la divulgation, pour le modèle de Diazadeh et Al si la divulgation publique est nécessaire l’entreprise doit breveter, pour le modèle de Jorda, ce thème est également évoqué dans la question 7 en effet, il dit que la divulgation d’une étape peut « influencer si le produit final doit être breveté ».
Ces deux modèles se chevauchent donc sur ces deux points essentiels à la prise de décision.
De mon point de vue, la feuille de route de Jorda semble le plus compléter la feuille de route de Diazadeh et Al. Tout d’abord, le modèle de Jorda étudie la question de l’exclusivité sur le marché, en effet, il considère que si cette exclusivité est importante et d’autant plus avantageuse, l’entreprise aura tout intérêt à mettre en place un brevet plutôt que le secret. En revanche, si cette exclusivité n’est pas importante, elle pourra mettre en place le secret.
Un second point concerne la mise en place d’un brevet faible, c’est-à-dire de toute innovation qui n’intéresserait aucun agent économique. Le modèle de Jorda considère tout de même que la mise en place de ce brevet serait essentielle.
Et pour finir, il aborde un dernier sujet qui est celui du nombre de personnes ayant accès à l’information de l’innovation dans une entreprise. En effet, ce dernier pense que si beaucoup de personnes y ont accès la mise en place d’un brevet est essentielle, car le secret aurait plus de chances d’être divulgué.
Enfin, ces deux modèles se contredisent sur un point essentiel qui est celui de la prise de décision concernant la « durée de vie » de la technologie. Le modèle de Diazadeh et Al considère que si « la zone technologique évolue rapidement », la mise en place du secret est la protection intellectuelle la plus appropriée. En revanche, pour Jorda, c’est l’inverse, en effet, ce dernier considère que si le développement commercial et donc la zone technologique comme évoquée par le modèle Diazadeh et Al va être limité dans le temps, il faut mettre en place un brevet.
Enfin, nous pouvons noter une principale différence dans le mode de prise de décision de la mise en place du brevet ou du secret. Effectivement, dans le modèle de Diazadeh et Al, la prise de décision se résume seulement à une succession de réponses aux différentes questions à savoir, soit oui, soit non. Tandis que dans le modèle de Jorda, la prise de décision est selon moi beaucoup plus précise puisqu’il permet aux agents économiques de répondre aux questions sur une échelle entre 1 et 10. À la fin, suivant le score obtenu, l’agent économique aura une réponse à sa question secret ou brevet, puisque le modèle lui déterminera l’une ou l’autre solution.
En conclusion, je pense que le modèle de Diazadeh et al est plus clair et facilite la compréhension, mais que la feuille de route de Jorda oriente mieux quant aux choix à faire entre secret, brevet ou publication défensive.
Néanmoins, je pense que ces deux feuilles de route sont complémentaires et qu’elles pourraient être d’autant plus efficaces si elles étaient regroupées en une seule feuille de route qui serait plus précise et complète.
Sources :
http://www.iphandbook.org/handbook/ch11/p05/
Show lesshttp://www.defensivepublications.org/
https://fr.wikipedia.org/wiki/R%C3%A9tro-ing%C3%A9nierie
Merci pour cette minutieuse comparaison!
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Secrecy vs. Patents : how to choose ?
Le cas de la découverte des poinsettias illustre le choix d’un agent, qui innove dans un secteur, entre la protection juridique du brevet et le secret. Dans le cas présenté, la famille Ecke décide de protéger leur innovation uniquement par le secret. Pourtant, même sans brevet l’entreprise familiale a pu jouir de sa découverte – la fleur poinsettia – durant des décennies, plus encore que si elle y avait recouru.
Aujourd’hui la firme Paul Eck Ranch possède la moitié du marché mondial de « l’étoile de Noël » et aucune autre entreprise n’a pu rattraper son retard. On peut donc supposer que depuis plus d’un siècle la famille Eck a su prendre les bonnes décisions pour conserver leur innovation et la faire fructifier à travers les générations.
Si le cas des « étoiles de Noël » est très particulier, peut-on synthétiser un modèle général pour que les entreprises prennent les bonnes décisions pour jouir de leurs innovations ?
Le schéma de Daizadeh (2002) tente de répondre à cette question par une « feuille de route » (roadmap) qui intègre une troisième option de protection au-dessus du brevet et du secret. L’agent qui innove va disposer de la technique de la publication défensive, elle s’applique dans le cas où les coûts de brevetage sont supérieurs aux gains qu’engendrerait le produit s’il était mis sur le marché. Dès lors que l’innovation est publiée, elle tombe dans le domaine public et ne peut plus être brevetée, ainsi cette option présente un moyen de protection sans subir les coûts du brevet (aux Etats-Unis le prix d’une demande de brevet s’élève à 530$ au minimum). Cette troisième option est souvent utilisée par les scientifiques qui font des découvertes majeures mais qui ne peuvent être appliquées au marché dans l’immédiat.
Dans ce même schéma, Daizadeh résume le choix Paul Eck Ranch pour le secret. Dans le cas d’une découverte qui n’a pas besoin d’être dévoilée au public, qui n’a aucun intérêt à être disponible en licence d’utilisation, et qui est faite sur un secteur où la technologie change rapidement le secret est le meilleur moyen pour conserver l’innovation.
S’agissant du brevet, il est intéressant pour l’inventeur de recourir à cette option s’il peut espérer des revenus supérieurs par le brevet ou la licence d’utilisation à ses coûts de brevetage.
Si nous revenons au cas des « étoiles de Noël », nous avons affaire à un exemple remarquable de ce que Daizadeh a expliqué un siècle plus tard de manière théorique. Ainsi la protection juridique d’une innovation par le brevet n’est pas le seul moyen applicable.
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Through the story of Poinsettias, this article tries to determine which innovations protection choice is the most profitable for the innovator; indeed, we know that it is important for the innovator to protect his innovation in order to guarantee him a monopoly and the associated annuity as well as cover up for the achievements made. Without this protection, which will take several forms as we shall see, the innovator has less incentives to innovate since his innovation is easily imitable by competitors.
First, the innovator wishing to protect his invention has the choice between two main protection methods: to grant a patent or to protect his innovation by a secrecy.
There are many good reasons to obtain a patent for the innovator despite of the debate on the intellectual property rights justification; It enables an operating monopoly for 20 years, permitting to the applicant to secure a return on invests and to prepare a future marketing. The patent dissuades competitors from doing a copy of product because it confers a juridical basis to sue possible adversaries; That’s why we say the patent confers to the inventor the right to exclude other actor of the innovation’s use. Furthermore, the patent allows to reduce confidential pressures because the innovation’s description is detailed in the patent’s document. In addition to this advantages, the patent allows to make profit with royalties paid due to license agreement, what’s correspond to the market of ideas because the firm “is selling” his patents and not his products. But the patent doesn’t prevent about infringement because it allows disclosure and it represents a non-negligible cost (on average 6000€ in France and 8000§ in United States).
However, when patentability’s conditions are not combined, the inventor can have recourse to secrecy to protect inventions. In my opinion, the secrecy is less formal than the patent because few texts control it. Inventors or companies whose choose the secrecy to protect their inventions, make the choice to not disclose manufacturing process also called “know-how” and this, for an unlimited duration, unlike the patent which expires after a certain period and which is not confidential: In the article, Ecke’s family success with poinsettias is due to the secrecy of the grafting’s technique, unknow to competitors for nearly a decade; Secrecy allowed the Ecke family to protect their innovation for a longer period than if they had been granted a patent. But inventor should implement conditions to keep the secrecy, vis third parties thanks to confidentiality agreement and vis possible employees thanks to employment contract. The secrecy can confer a sustainable competitive advantage if the inventors put in place rigorous management.
Contrary to the two first protection’s method, it exists another approach called: defensive publication which be expressed by a public disclosure of details of an invention in order block future patents in the same concept. The purpose of a defensive publication is to destroy the balance of the deal by disclosing an invention to the public, in general publication should be considered when the cost of patenting outweighs the benefit of the patent monopoly and the invention cannot be protected in a manner that is sufficiently secure to support trade-secret protection.
It is in the goal to determine which strategy is the best that several authors have represented roadmaps to help innovator to choose the good protection. The first roadmap was proposed by Daizadeh et al in 2002 in which we can find a general approach for determining when to patent, publish, or protect information as a trade secret while answering yes or no to 6 questions. The second roadmap was created by Jorda in 2007 and is proposing a list of 11 questions to help the innovator to choose between patenting or secrecy, defensive publication is not included.
In conclusion, we have seen it exists several different ways to protect an innovation or an “know-how” for the inventor and each have advantages and inconvenient but mostly depend of the innovation’s type and the opportunity to keep the invention secret. But in general, these three methods allow companies to generate incomes and promote them even if the third method is relatively new and companies are chilly at the idea to disclosure their innovation but the reality has showed this is a method that has borne fruit and its development is to be expected.
References :
Show lesshttp://lentreprise.lexpress.fr/gestion-fiscalite/droit-des-affaires/cinq-bonnes-raisons-de-deposer-un-brevet_1515760.html
file:///C:/Users/Utilisateur/Downloads/Defensive-Publication-Study.pdf
http://www.effectualservices.com/services/defensive-publication/
http://economie.fgov.be/fr/entreprises/propriete_intellectuelle/Innovation_et_propriete_intellectuelle/protection_secret_inventions/#.WIuyfvnhDIU
https://www.alain-bensoussan.com/wp-content/uploads/P637ART225.pdf
http://simplicable.com/new/defensive-publication
http://www.nature.com/bioent/2003/030101/full/nbt0202-191.html
http://economie.fgov.be/fr/entreprises/propriete_intellectuelle/Innovation_et_propriete_intellectuelle/protection_secret_inventions/#.WIuyfvnhDIU
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As said in the article, the innovating firms have to make a choice between guarding their innovation secret or to get it patented. This is a very strategic choice because both, patent and secret, have their benefits and drawbacks.
I think that choosing the secret is the more risky way. On the one hand you have an unlimited period in which the secret can be kept, but once it is divulged everybody has the opportunity to imitate your innovation, which is very harmful for your company’s profit. Moreover, after dissemination of your secret it can be patented by someone else than the innovator. Compared to the patent, the secret is without direct charge; you don’t have fees to register your innovation. Indeed, it can cost very much too to keep your innovation secret for a long time. You have to adapt at the secrecy you strategy from the beginning. Moreover, we don’t have to forget that there are innovations that don’t fit the criteria to get a patent. For these innovators the secret is the only option to protect their innovation.
On the other hand we have the patent. In my eyes, it is the more secure way. Even if you have to describe every little detail about your innovation, you are sure that it will be protected for a certain period and that you will get the corresponding revenue (if the innovation is a success). In addition, the whole patent system may accelerate the innovation sector. It can be seen as a system to share knowledge and this may contribute to the evolution of new technology. Patents allow others to avoid non-sense investments in research and development in domains, which are already exploited. This is a surplus for the whole economy and not only for the innovator, like it is the case for the secret.
There is a third option mentioned in the article: the publication. It consists in the fact, that you publish your innovation, which induces that no one else can get a patent on it. This makes the use possible. Not only the innovator can benefit from the innovation but also others. It is the least expensive method.
As a conclusion I can say that even if I would prefer to patent my innovation, many firms show us, that the secret is also a very good option to become successful. The sector that the innovation belongs to and the riskiness of the innovator will clearly influence you choice.
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Innovation contributes to buisness success, but a innovative company must ask itself the most important question : what is the most effective way to protect an innovation ? Indeed, they face a risk of pillage of their innovation and/or counterfeitinf. Then they have the choice between keeping secret or patents. We will try to see that solution is the most effective.
Patents protect a technical innovation ? The protected invention must meet 3 contitions : be new, be subject of industrial application and involve an inventive subject.
The main disadvantage is that it involves potentially high costs by deposit fees,… The patent hasn’t immediate effect, there is a waiting time for obtaining it and has a limited period.
Moreover, the patent has the disaventage to force the applicant to reveal his invention, so the patent gives to the competitors the acess at the technological information of the company 18 months after the obtention of the patent. Patents are a less risked methods, it permits to offering a much greater protection than the secret by ensuring the right to exclude competitors with certainty.
Secret protection can be used, and it can also be a relevant strategic choice to keep an innovation secret. In addition, innovations that the secret protects can complement or extend a patented invention. Protection is unlimited in time as long as the secret exists. Secret is not an exclusive right, i.e if the competitors discover it then the company is no longer protected and it can’t prevent competitors from reproducting its product, that is what makes the protection difficult.
This method has an advantage in comparison of patents, it has lower costs because it doesn’t require approval, and there is no waiting time, so the process is easier.
Moreover, unlike the patents, secret makes it possible to protect processes, manufacturing formules, technical knowledge used in an industrial, organizational or commercial process.
Daizadeh et al in 2002 proposed a roadmap and introduce a third way to protect innovation, defensive publication. This method consists in publishing inventions in technical or comercial journals in order that competitors can’t patent an identical idea. This method is a quick and inexpensive way to protect an innovation and is therefore accessible to small and medium sized firm.
This option appears to be more favorable if the IP and litigation costs are higher thant the patent’s excpected income.
To conclude, the choice between secret, patent or defensive publication must be chosen judiciously. There isn’t better protection than the others, the choice depend on the type of innovation and the size of the company.
http://www.wipo.int/sme/en/ip_business/trade_secrets/patent_trade.htm
Show lesshttps://www.ipdigit.eu/2013/10/mixing-patents-and-trade-secrets-for-complex-innovations/
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All innovators are facing the same problems. «Should i keep my innovation secret or patent it? »
Both of them are different ways to protect innovations.
We are here looking for the most effective solution.
First solution would be secrecy :
Principle of trade secret protection is the innovation must be kept secret, as opposed to patent protection, where innovation has to be disclosed worldwide.
Trade secrets keep a kind of competitive advantage because innovation is not revealed. But once it goes into public domain, this advantage no longer exists. This requirement makes the protection difficult.
Secrecy has no deadline in comparison with patents, but protection can be lost in some ways (spying, inadvertence)
Also, trade secrets don’t require any approval that makes the process easier. It means that this process is not very expensive because there are no authorities that analyze the domain, field of innovation but keeping informations secret can cost a lot.
The lack of authorities means that there is not a waiting time in comparison with the patent which have to wait for the authority to say if the innovation is patentable or not.
Competitors are in the total blur because absolutely nothing is revealed.
On the other hand, we have the alternative called patent.
A patent is a right granted to the innovator of an invention that prevents others from making, using, or selling the invention without his permission.
A patent provides exclusive rights for a period of time, generally 20 years. After this, the innovation becomes part of public domain and everybody can copy and use it. The innovator will not be rewarded anymore.
Patents can provide a quite large protection for innovation. They can cover almost any fields, but some of them can be difficult to patent. For example, softwares can be hard to patent because of the abstract idea.
However, patent registration can take a lot of time and money to be accepted or not by the Patent Office. This is one of the main obstacle for innovators.
According to Andrei Mincov “A patent is good for 20 years after the filing date, but it takes five years on average to get one. »
Some authors like Iraj Daizadeh David Miller include a third solution, a « defensive publication ».
A publication is a written announcement describing the innovation in a clear enough way that a skilled person in the same field can understand it.
This is the least expensive way and when a publication is made, only inventors can have a free use of the innovation. They share between them all the benefits.
The same authors made a roadmap in order to make the choice easier. Indeed, the authors suggest some cases for determining when to patent, publish, or protect information as a trade secret.
Another author, Jorda, offers us another roadmap more precise, with it’s 11 questions. In comparison, Daizadeh’s roadmap contains only 6 steps.
We can say that Jorda’s covers a larger part of the field, useful for a sharper, meticulously use.
In conclusion, the choice between patents or secrecy ends up being especially important.
Patents and trade secrets represent two of the most common methods to protect innovation.
According to Michael B. Fein “The choice of patent vs. trade secret depends on likely patentability and the possibility of maintaining secrecy,”
Is the company is able to keep the innovation secret for a long time in an efficiency way, then trade secret would be the solution.
To promote innovation the most efficiently way, we need both patent and trade secret protection.
Both of them can work together. While patents protect innovation, trade secrets can protect the know how.
References :
1- http://www.defensivepublications.org/defensive-pubs-faqs
2- http://blogs.orrick.com/trade-secrets-watch/2014/10/15/on-obtaining-and-asserting-both-trade-secret-and-patent-protection-the-itc-and-federal-circuit-weigh-in/
3- https://techcrunch.com/2016/06/20/the-changing-trade-secret-and-patent-equilibrium/
Show lessVery good summary.
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The article introduces the third option of “defensive publication” when choosing between secrecy and patent to protect an innovation. It seems to be a more favourable option if IP and litigation costs exceed the revenue potential of the patient. Defensive publication is becoming a quick and cheap way of protecting intellectual property, especially for small and mid-sized companies which do not have the resources to dedicate to the process of filing and obtaining a patent but want to ensure that competitors cannot stop them from commercializing a technology by filing a patent first.
Among the two roadmaps mentioned in the article, Jorda (2007) does not explore the option of defensive publication. Although, it can be said that any technology found to be patentable by the roadmap but the innovator doesn’t have resources to cover the patent cost may be published. Daizadeh et al. (2002) make the option explicit in their roadmap.
Although, the two roadmaps overlap when looking at the technical aspects of a product: possibility of reverse engineering and extent of disclosure, Jorda (2007) goes further to explore marketing and legal questions such as: competitive advantage/ disadvantage due to exclusivity, enforceability of a patent. Daizadeh et al. (2002) instead focus on the area of the technology the patent belongs to and how fast it is expanding. In that respect, the two roadmaps are complementary and a better decision can be arrived at by looking at the two together.
Daizadeh et al. (2002) roadmap asks some questions the answers to which may be very hard to ascertain as a clear yes/ no. Jorda while explaining his 11 questions mentions that it may be very difficult to ascertain if others could arrive at the same development independently even while they are working in the same field hence, it is easier to rate it on a probability scale than to make a clear yes/ no choice. For example, in electronic circuit design, it is may be found that 2 patented design are identical in function but differing only in the way the circuit components are laid out. This flexibility in Jorda (2002) roadmap allows for a broader scope of application.
In the same roadmap, each question is assigned a 1 to 10 value and then an aggregate score is calculated to make the decision. A very high or very low score is a clear predictor of the choice but a mid-range score (45-75) can often be ambiguous. The author then suggests looking at the kind technology in question to make the choice between trade secret vs. patent (often patents for products and trade secret for processes). This too lends a flexibility to the model that the former model is devoid of.
The two roadmaps are not contradictory because they lead to a similar conclusion for patent v. trade secret question for a wide variety of innovation. However, they explore different aspects of the technology and patentability and hence are complementary.
References:
http://www.nytimes.com/2002/02/18/business/new-economy-many-midsize-companies-find-that-defensive-publishing-quick-cheap.html
http://www.forbes.com/sites/toddhixon/2013/10/04/for-most-small-companies-patents-are-just-about-worthless/#54b4e8ec16ab
http://www.businessinsider.com/chart-of-the-day-the-totally-useless-patent-wars-2014-10?international=true&r=US&IR=T
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According to this article, there are two effective choices to protect an innovation. The one is secretary, and the other is patent. Which is the best way depends on the situation. Some innovations are suitable for secrecy, and others are suitable for patents. So, what is the difference between two situations? The answers are described on the roadmap.
There are two roadmaps in the article. The common points are whether there is a probability of licensing, reverse engineering, a probability that someone else will develop alternative means, and that someone will innovate same ideas. These all relate to the process of creating innovation. There are also some differences between two maps. Jordan’s map places greater emphasis on after innovation. For example, there are three questions about considering competitors, and it is also considered after licensing on Jordan’s map.
Jordan’s map has many questions about the relationships between innovation itself and competitors, potential competitors (like someone who planned to innovate the same innovation or has same ideas to innovate), companies etc. It leads whether to make the innovation a trade secret or a patent.
http://www.lrrc.com/04-01-2007
Show lesshttp://www.ipwatchdog.com/2016/05/25/choosing-patents-and-trade-secrets/id=69368/
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It is an age old debate for any innovator to choose between patenting his/ her idea and guarding it as a trade secret. The author of the above article adds another option to the list of choices namely publishing the idea to prevent competition from patenting it and yet ensure disclosure. Before falling prey to the tricky decision of how to protect one’s innovation, he/ she must develop a sound understanding of the following aspect of his/ her idea.
End goal of the idea – If the innovator is addressing a societal problem for public good then the option of trade secret stands ruled out. The innovator is compelled to make a public disclosure to maximise the utility of the idea. He may then choose the publication route as a mark of goodwill or to allow other parties to further develop the idea. He may also choose the patent route to monetise his idea and ensure licensing to the right party for implementation.
If the innovation has been devised to address a gap in an existing business model and the ultimate objective is profit then the innovator may choose the trade secret route in the initial few days/ years. This can be adopted as a thumb rule as this allows the innovator to further refine the idea, and also gain any first mover advantage associated with the idea. After the idea has been pursued to an implementable stage, he may choose between the publication and patent route based on the framework discussed in the article.
There are other assessments associated with the idea that must be carried out namely patentability, practical feasibility, time frame of the gain, imitability etc. These aspects have been thoroughly discussed in the comments posted on the blog. Thus, I’ve restricted my answer to the one unique aspect of the idea which is yet to be taken into account.
Source – some thought on the article to devise original content!
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Jorda (2007) and Daizadeh et al. (2003) established a way to support the decision-making when it comes to choose the way to protect an invention. However they seem to quite agree on the factors that should be taken into consideration, the two roadmaps propose two different approaches for the patent vs. secrecy dilemma. They are indeed both made of a set of questions that relate to commercialization, easiness to copy and to the area of the new technology, but the possible results vary from one method to the other.
Daizadeh’s questions only provide one unambiguous answer among three possibilities: file a patent, use trade secrets or publish your findings. On the contrary, Jorda’s method can also lead to filing a patent or using trade secrets but it also discloses a third answer that leaves more room to interpretation.
This third possibility stands in the middle of the two first solutions and indicates that the protection that is chosen doesn’t especially matter. This means that, for a given area of technology, there would not be any prejudice to resort to the other strategy rather than to the one generally used in that area.
The paper also highlights the fact that a marriage of the two solutions can be considered as well: the company would then use both secrecy and patent simultaneously, which is not possible according to Daizadeh’s roadmap where the solutions are mutually exclusive.
Using trade secrets to stretch the protection of a patented invention is not inconsistent with the policy of disclosure implied by the patent, even if trade secrets and patent differ on this issue. To push the idea a little further, patents can even become perfect supplements to other forms of IP protection, such as trade secrets (rather than the other way around). Jorda proves this complementarity by showing that they serve different economic and ethical purposes (1). By comparing the differences of both kinds of protection, it appears that, while patents have multiple limits and take a long time to operate, trade secrets are implemented without delay to protect knowledge as long as the invention is not revealed or discovered.
The overlap between IP fields explained above clearly represents how Jorda’s roadmap differs from Daizadeh’s method, which only considers the types of IP protection as independent rather than as elements that can be combined.
On the other hand, Daizadeh et al. complement Jorda as they include another way to protect IP rights in the solutions of their roadmap, which is publishing the findings. This alternative was traditionally used for scientific discoveries but this is no longer true since research organizations and universities are more and more encouraged to associate with private entities such as companies to develop their projects (2). Scientific publications benefit from copyright and dissemination is a defensive way to protect knowledge at a minor cost.
(1) Jorda K. (2007), Trade Secrets and Trade-Secret Licensing, http://www.iphandbook.org/handbook/ch11/p05/
Show less(2) The European IPR Helpdesk, 2013, Publishing v. Patenting, http://www.iprhelpdesk.eu, consulted on November 23rd 2016.
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“Trade secret or patent ?” that is the issue that all innovators are facing. To help them in their choice several tools exist, in this comment I will focus on two roadmaps given by Daizadeh et al. (2002) and Jorda (2007).
Before comparing the two tools, it might be useful to have a global picture of the pros and cons related to the secrecy and the patent techniques.
On the first hand, the trade secret allows the company to keep the knowledge of its innovation private. It means that the company has no legal protection that prevent competitors to copy its innovation. The length of protection depends on how long it takes to the rivals to discover your secret. It implies that once your competitors have discovered your secret they can patent it and benefit from an exclusive usage.
On the other hand, the patent system refers to a legal right of exclusion. In other words, the company benefits for 20 years from a legal protection against imitators. Nevertheless, patenting an innovation requires disclosure, it takes time and it is costly.
Now, that we can differentiate the secrecy from patents, let’s compare the two useful tools that may help innovators to choose between both. In some extent the works of the researchers have common criteria. For instance, they both focus on the reverse engineering, the willingness of licensing, the market’s evolution and the market revenue.
However, the two roadmaps differ in some extent. Indeed, the approach of Daizadeh et al. is based on 6 steps that involve binary answers: “yes” or “no”. While the Jorda’s questionnaire consists of 11 questions with nuanced evaluation using a scale from 1 to 10.
Moreover, Jorda’s work covers a larger and more precise scope that includes for example the design around the innovation and the requirement to access other unprotectable information.
Besides that, Daizadeh et al. introduced a third category to protect an innovation: the defensive publication. This defensive strategy is not considered by Jorda.
To conclude, according to me, the two roadmaps are both complementary. In the first instance, I suggest to employ the 6-step technique in order to have a quick idea of which way is the most effective to protect the innovation. Then, I recommend to focus on the Jorda’s evaluation questionnaire to confirm the intuition provided through the first approach.
References:
Belleflamme, P. (2013). Mixing patents and trade secrets for complex innovations
Online on https://www.ipdigit.eu/2013/10/mixing-patents-and-trade-secrets-for-complex-innovations/
Daizadeh, I., et al. (2002). A general Approach for determining when to patent, publish, or protect information as a trade secret. Nature biotechnology, 20, 1053-1054.
Jorda, K.F. (2007). Trade Secrets and Trade-Secret Licensing. Intellectual Property
Management in Health and Agricultural Innovation: A Handbook of Best Practice. Online on http://www.iphandbook.org/handbook/ch11/p05/
World Intellectual Property organization. (n.d.). Patents or Trade Secrets? Online on http://www.wipo.int/sme/en/ip_business/trade_secrets/patent_trade.htm
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The two roadmaps try to give an answer to the question: “What to do after I made a discovery?” Since (usually) much work and money has been invested in a discovery the innovator cares a lot about the answer. Therefore, it is helpful to get some advice.
Show lessDaizadeh’s roadmap suggests three different answers: Trade secret, Patent or defensive publication. But Jorda’s roadmap only leads to two different answers: Trade secret or Patent.
For a definition of these strategies see for instance Philipp Flesch’s comment.
Thus, I’ll proceed with the analysis of the roadmaps.
Jorda’s questions correspond to three categories: marketing (1-4), technical (5-8) and legal (9-11). There are no categories for Daizadeh’s roadmap but I will try to categorize some steps.
I start with the questions which are very similar to each other.
Question 1 is basically the same as step 5 in Daizadeh’s roadmap. Both are about earning revenue through licensing and both suggest to patent if licensing might be profitable (since licensing a secret does not work).
Question 2 is similar to step 6. Maximizing exclusivity (as it is called in question 2) works with a patent. Regarding the competitive advantage through a patent one should take the IP processing for receiving a patent into account since this process can be very costly. Additionally, one should consider litigation costs for maintaining exclusivity (step 6 explicitly addresses these points).
Since there are similarities between these questions one can conclude that step 5 and 6 also belong to Jorda’s category “marketing”.
Question 9 is a follow-up question on question 2/step 6. We have already considered litigation costs but what was missing before is the probability of winning in court. In Daizadeh’s roadmap this point is not mentioned directly but you might think about it while reflecting on litigation costs.
Question 6 and 8 are like step 2 and deal with the risk of your competitor making the same discovery. A complementary question is question 3, because it is concerned with the extent of the negative implications in this case (what is missing in Daizadeh’s roadmap).
Step 2 should belong to Jorda’s category “technical” like question 6 and 8 do.
Let’s turn to question 4: It is about the probably varying importance of the discovery over time. And as Yuhan Zhang said in her comment this question might be related to step 3 since this step is considering the change of technology over time. Here I also see the contradiction because the fact that there is a rapid change leads to two different answers (trade secret with Daizadeh and patent with Jorda). In my opinion, the suggestion of a trade secret is more reasonable, because the granting procedure for a patent takes a long time. Due to rapidly changing technologies, the granted patent might be worthless in the end.
Question 5, 7, 10 and 11 are left out in Daizadeh’s roadmap. But especially question 10 is, in my opinion, very important. If you answer this question with “yes”, a trade secret won’t be suitable at all. It does not make sense to have a trade secret when it is difficult to keep it secret.
In her comment Yuhan Zhang mentioned the missing differentiation between more and less important questions. I agree with her and would appreciate different weights for different questions. But when thinking about which questions might be more important than others one can realize the following: Some questions aim at the same point. There are questions 6 and 8 which are both about the threat of a competitor making the same discovery. This is a very important point and because there are two questions tackling this issue, this point has twice the weight compared to other points. For question 2 and 9 it is similar. Both aim the effective exclusivity of a patent. Having pointed that out, Jorda is, after all, distinguishing between more and less important considerations.
To conclude, I would say Daizadeh’s roadmap is very useful for students and other people who wish to have a quick overview about important considerations in case of an innovation, whereas entrepreneurs who actually have to decide what do with their innovation should consult Jorda’s roadmap.
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Although patents are the primary source of protection for inventors, an inventor may choose to rely, instead, on the protection of conferred by trade secrets. Of course, as the two methods present different features, they induct to extremely different conditions and consequences that could affect the inventor’s revenues in an irreversible way. Then, the decision whether to patent or keep a trade secret is an important one.
In some cases, trade secrets are the only way to protect an invention, for example when the invention does not meet the criteria for patentability. But generally, for patentable inventions, the choice between patenting and adopting trade secret completely relies on the inventor’s decision.
Although trade secrets are a more risky method of protection, it presents many advantages.
Trade secret protection may be favorable when the benefit of the technology is of very short duration. For example, if the invention will be obsolete in less time than it would take for a patent to issue (which can take several years), or if the competitive advantage is gained by being the first on the market.
Another advantage of trade secrets is that trade secret protection is not limited in time. Thus, a trade secret may continue indefinitely as long as it continues to meet the definition of a trade secret.
An example could be the Coca Cola formula. Thanks to trade secret method, Coca Cola remains a leader in the world’s soft drink industry based on its secret formula, over 100 years later. If, instead, the company would have decided to patent it in 1886 when the formula had been invented, anyone could now be free to copy it.
Other advantages of trade secret protection are that trade secrets have immediate effect, and there are no prosecution costs or maintenance fees in order to establish a trade secret or to keep it in force. Nevertheless, even if any registration is required, trade secrets may still be expensive to maintain because of the costs associated with keeping the information secret. These costs include physically restricting access to the grounds and buildings where the secret is kept or used, restricting information to individuals in the company who need to know, labeling information as confidential, protecting electronic forms of trade secrets via means such as encryption, firewalls, and password protection, and drafting contracts for employees, suppliers, customers, and others, which clarify the existence of trade secrets and the duty not to disclose them (1).
On the other hand, patents provide a protection much stronger than trade secrets, ensuring the right to exclude third parts to commercialize a product. This is the reason why this method is highly recommended in fields characterized by a fierce competition and it represents a good response against reverse engineering. The “negative” aspect, comparing to trade secrets, is that patents only have duration of 20 years, after which the invention loses its protection against third parties.
Daizadeh et al (2002) and Jorda (2007) propose two different models to analyze which is the better choice between patents and trade secrets. It is important to note that Daizadeh et al added a further option in his model: the “defensive publication”, which consists in publishing the invention, making it part of the State of Art and so preventing someone else from patenting it.
The roadmap developed by Daizadeh et al is structured on six YES/NO questions – concerning, for example, the technological area, the characteristics and the estimated duration of the invention – which lead to the choice of the most appropriate method for a particular invention among the three solutions.
Jorda’s model, instead, is based on a questionnaire composed by 11 questions with answers going from 1 to 10. If the total score of the answers is below 45 patent protection is preferred, while a score above 75 determines trade secrecy as the best option.
At first sight, Jorda’s model may seem more complete and may lead to a more precise choice, but it is undeniable that the first model provides a quick summary of the point and includes the main areas that affect the final decision.
In conclusion, as the two models follow completely different criteria and their divergent approach to the analysis is not comparable, I believe that using both models would offer the inventor an accurate overview of the critical factors that could have an impact on the decision and to determine which the best strategy to follow is.
(1) http://www.lrrc.com/04-01-2007
Show lesshttp://www.iphandbook.org/handbook/ch11/p05/
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When it is time to protect an innovation, it is useful to think about the multitude of choices available: keep it as secret, patent it, use a mix of both (which could be used in case of complex innovation) or make it public. The most reasonable choice would appear to patent our invention because it will give us the warranty to use our invention as we pleased during 20 years.
But is it really the best option? Some big companies, as Coca-Cola for instance, choose to favor secrecy over patent by keeping their formula secret. This could seem counterintuitive as keeping secrecy could increase the risk of other competitors finding the innovation and using a patent to force you to stop using it.
Questions need to be asked before choosing between secrecy and patent. In our case, two roadmaps (Daizadeh and Jorda) can be followed to determine whether or not it is better to choice secrecy or patent. The two roadmaps diverge in their way to conclude: when Daizadeh’s model guides you with a path to follow, Jorda’s model takes its conclusion with the total score obtained by answering questions. We can also point that Jorda doesn’t let the choice of publishing the innovation to act defensively. He only considers two options. Despite this, Jorda’s model takes into account a legal aspect that was left out by Daizadeh. However, they both point out that the choice between patent and secrecy needs to consider technical and marketing aspects which tend to be the core of the question.
Of course it is always likely to add more aspects which could leads to another conclusion. Secrecy or patent must be choosen as wisely as possible because underestimated competitors could lead to losing the lead provided by innovation.
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When we build a company that creates something new, we have to trade-off between patent or secrecy. This is not so easy to answer due to some advantages and disadvantages that these two kind of protecting something propose. I will present advantages and disadvantages we face in that context by comparing them.
Show lessFirst of all, note that whether we choose secrecy or patent, the goal is to protect our idea. But how long do we want to protect it? By asking this question, we can answer that a patent protects us during 20 years in contrast with secrecy that could protect us during illimited time. It means that if we need a protection during more 20 years, secrecy is the option but it allows us more risk. Indeed, by keeping our product secrect, the risk is that someone else could steal it and then patented it. In that case, we won’t have the permission to produce our product.
Keeping the product secret does not cost us. The cost we have to pay to patent a product could be very expensive and it is not always possible for some organization as start-ups.
Keeping secret could give motivation to people who work with you. In some cases, only few people know the secret (2 or 3 people only in the organization), but it is not really motivating for people who work with you and don’t know for what they work exactly. When people who work with you know all of the secret features of the products, they will be maybe motivated because of the trust you give them. Note that is also a big risk.
We probably won’t patent the product if the product is easy to copy with a few difference. In this case we are more likely to keep it secret.
Choosing the secret can give us the monopoly power during a very long time for the product.
What about the social welfare? In fact, if a company patents a product, competitors can create substitutes that are cheaper and so profitable for consumers. Furthemore, another reason could exist to keep the product secret. Looking at the example of Coca Cola could ask us some questions. Keeping the secret of the recipe is probably for other reason than advantages of the secret option. Indeed, disclosing the recipe by patenting it allows people to know exactly what they drink and because of that sales could go down dramatically in addition of being suing in the court because of some ingredients that provide some kind of disease.
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At present, we are searching for new ways in order to promote and develop innovation. Today, the major incentives are:
1. Patent
2. Secrecy
3. Defensive publication
4. Contracted research
5. Inducement prize
These tools were developed with a simple aim: stimulate and reward innovation. Concerning the patent, it rewards an innovation by giving to its author the right to a monopoly, preventing any competitors to enter its market and allowing him to set the monopoly price (for a given duration). However, since a few years, the patent system tends to suffer from certain drawbacks. Specialists have been searching for better “incentive” systems. A rewarding prize system was suggested and it seems that it has successfully solved some disadvantages of the other systems. Unfortunately, a solution is never perfect and this option has its own disadvantages.
In this comment, I will try to show that none of the solutions here above is the perfect one, however, depending on the situations, using one or a combination of them should be recommended.
All these incentives have disadvantages, that’s why in my opinion a system composed of only one type of incentive is not optimal.
Main disadvantages of
– Patent: deadweight losses creation, silent patent, monopoly price, restricted use of knowledge, duplication of the research effort, innovator benefit from its patent only if capable to reach its potential market (so profit is not guaranteed), push to innovate only in fields where a profit can be made thanks to a patent.
– Secrecy: possible only if reserve engineering is impossible.
– Defensive publication : hard to make it profitable/ no monetary incentive to innovate so no compensation of the R&D costs,
– Contracted research: unobservable effort, asymmetric information, free riding and moral hazard problems.
– Inducement prize: only one winner the others have nothing, duplication of research efforts, the money prize may not compensate the spending in R&D, no patent on the innovation, how to implement your innovation outside of the inducement prize competition, prize must be attracting for the public and usually has a commercial goal, asymmetric information between innovator and the organisation of the prize.
Main advantages of:
– Patent: competition spirit pushes and accelerates the innovation process, diffusion of knowledge, monopoly, protection of your ideas.
– Secrecy: possibility to keep your idea secret indefinitely
– Defensive publication: can avoid a patent to be issued, free knowledge
– Contracted research: no risk concerning money because innovators are paid anyway, can be contracted in any field.
– Inducement prize: done on a voluntary basis which avoid any free riding effect and any moral issue, recognition and pride are the main motivations, no deadweight loss, availability of the breakthroughs, no need to monetize your idea, no monopoly, publicity when you win and a valuable marketing tool, encourages innovations in specific and precise topics, pushes teams to invest significantly more money than what they can win, opportunity for innovators to pursue a path that would otherwise be considered too risky (challenge the conventional wisdom of what is impossible), how do you choose the winner, focus on a precise challenge.
When we look at all these advantages and disadvantages we can see that each incentive has its positive and negative aspects. Competition cannot at the same time promote efficiency and drives the prices down.
Patents providing protection while promoting the diffusion of information has clearly been positive for the progress of Innovation since its establishment. Unfortunately, some incentives can be noxious for some sectors. Patent can be very restraining in the drug sector because poor patients are not able to pay the monopoly price for their medication. Patent are not recommended in sectors where there is no financial benefit, for example to solve social problems, medicine, pharmaceutical.
Concerning the prizes, they can be offered by anybody and some philanthropists are very interested in it. They can sponsor prizes to promote researches in “non-profitable” (in terms of money) fields (ex: social). However, the major problem of this system is to select correctly and objectively the winning innovation.
To conclude, prizes should be used when there is a clear objective and where the innovation is not profitable in terms of money.
Bibliography:
Badhwa, V. (2014) The powerful role of incentive competitions to spur innovation, en ligne: https://www.washingtonpost.com/news/innovations/wp/2014/05/21/the-powerful-role-of-incentive-competitions-to-spur-innovation/
Brunt, L. (2011) Inducement prizes and innovation, en ligne: https://afinetheorem.wordpress.com/2011/09/27/inducement-prizes-and-innovation-l-brunt-j-lerner-and-t-nicholas-2011/
Stiglitz, J. (2007) Prizes, not patents, en ligne: http://www.paecon.net/PAEReview/issue42/Stiglitz42.pdf
Porter, D. (2012) Pros and cons of patents and prizes, en ligne: https://www.patexia.com/feed/pros-and-cons-of-patents-and-prizes-20121221-2
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This article gives information about two market-based mechanisms protecting an innovation: patents and secrecy. I will begin this comment by defining the two possibilities an innovator faces: patents and secrecy. Patents, according to your slides, concern the private value of innovation, and provide a monopoly profit for a determined number of periods (maximum 20 years). This kind of protection creates incentives by making good excludable. Moreover, once the good falls in public domain, its diffusion is ensured. The main differences with the secrecy are this last provides a monopoly profit only for as long as the secret does not leak (after, the innovation is in the public domain). Before that time, knowledge is non-rival and kept private, which gives incentive for production but creates social costs. Finally, secrecy offers no protection against independent innovations.
Those two roadmaps are useful tools to help innovator to choose which protection to adopt. Let’s compare these maps. The first one, presented by Daizadeh et al. (2002), is formed by a “cumulative path”, made by only “yes or no” questions, while the second roadmap, proposed by Jorda (2007), is a succession of independent questions, whose answers are classified by functions (marketing = low rate, technical = middle rate and legal = high rate), and the addition of it leads to a conclusion: patenting or keep secrecy. Notice that a nuance is made when the result stands in “the middle”, and sub-questions are asked to find the best way of protecting the idea. The map of Daizadeh et al. also considers a third way of protection: the defensive publication, which consists in publishing inventions in technical or trade journals in order to prevent rivals from patenting and establish prior art against competitors. It also talks about the necessity of public disclosure, the potential new area of technology, while the Jorda map takes into account the competitive advantage/disadvantage of being exclusive, the design around, the chances of validity of a patent, and the potential difficulty to control the internal dissemination in case of a secrecy. By this, they complement each other complements the other.
Then, I observe that they overlap each other in some points. First, they both address the issue of the likelyhood of being licensing. They also both consider the time of the change for a technology, the reverse engineering. However, none of them talked about social expected value or cost, which is a basic problem of innovation.
According to me, those maps face some limitations. To quote Jorda (2007) : “ Patents (which require full disclosure) and trade secrets (which are kept confidential) are not incompatible. On the contrary, they can complement one another: patents protect inventions and trade secrets protect collateral know-how. Using patent and trade-secret protection together in a synergistic manner results in a potent exclusivity. Moreover, as licensing has become the preferred instrument for technology transfer, most technology licenses are hybrids, covering both patents and trade secrets.” (Jorda,2007). This complementation of the two concepts is not taken into account by the two roadmaps.
Then, further in your IPdigIT blog, I found another complement to these maps. Indeed, sometimes there exists “patent-secret mix”, overall in the food industry, which consists in patenting a whole thing and keeping sub-innovation secret. For example, KFC patented its method of frying chicken but kept its “11herbs” secret. Macdonald also patented the method of making a sandwich, but made a secret of its “bigmac sauce”.
To conclude, these two roadmaps are complementing and sometimes overlapping each other. I found interesting to talk about the defensive publication alternative in the Daizadeh et al. map. However, I find the Jorda one is more complex and precise than the Daizadeh et al. one, asking independent questions, offering more answers, and letting a space for a “case-to-case” analysis.
Sources :
Show lesshttp://www.iphandbook.org/handbook/ch11/p05/
Moodle : LLSMS2041_08_2016_secret_rewards.pptx
IPdigIT blog
https://www.ipdigit.eu/2013/10/mixing-patents-and-trade-secrets-for-complex-innovations/
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As stated in the article, when a company makes a discovery it often has a choice between these two options : state secret and patent to protect it. The article also introduces the idea of a third option which is the publication of the invention in the case of potential revenues are lower than the costs related to a patent. Indeed, if the cost of obtaining a patent is higher than the profits that could reasonably be generated by the invention, there is no interest in losing money in attempting to obtain a patent .
That said, we will not focus more on this case and we will analyze a little more in depth the difference between the secrets and the patents as well as understand why one is preferable to the other in some cases well specific.
Let us begin by clarifying that not all inventions are necessarily patentable, some conditions for obtaining a patent are not always fulfilled, which already closes the door of the patent for a whole bunch of innovations whose companies Inventors have no choice but the secret to protect them.
Beyond that, if the invention fulfills all the criteria of patentability, the company must make a choice. What are the advantages to protecting his invention by secrecy rather than by a patent:
– No limit of protection in time: As long as a secret is not discovered, it can not be used by another company.
– No expenses incurred. Obtaining a patent can cost a lot of money.
– No waiting times
– No formalities to respect, only precautions to take to avoid the disclosure of the secret.
The main problem with secrecy is that it can be discovered at any time and that if it is contained in a product nothing prevents competitors from examining the product to find the secrets it contains and use it for their purposes also since secrets do not give an exclusive right to prevent third parties from making commercial use of it.
Thus, to choose what is most appropriate between a patent or a secret to defend its invention, everything depends:
1- The risk that the company is ready to take (A risk averse company will choose the patent without hesitation).
2- The confidence of the company in its ability to keep the secret (Often quite complicated to keep the secrecy when it concerns a technology contained in a product intended for third parties).
3 -The probability that competitors will make the same discovery as inventors in a time that could be shorter than the term of protection possibly offered by a patent.
Sources :
Show less– http://www.wipo.int/sme/en/ip_business/trade_secrets/patent_trade.htm
– http://www.erikjheels.com/156.html
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These two models are both trying to give path leading to the best decision in terms of protection: patent or trade-secret. At first sight, we could think that the second model (Jorda) is better than the first (Daizadeh et al.) one because of the numbers of stages; eleven questions instead of the 6 steps. Another argument could be the order in which the model were developed: 2002 for Daizadeh et al. against 2007 for Jorda. Again, the 6-step model seems to have the advantage. However, a further analysis is needed to confirm or not such a statement.
As far as I am concerned, I think that both models have positive points but also negative ones. I will here briefly list them in order to highlights the qualities I find valuable and then decide which one I find better.
The Daizadeh et al. model is represented by successive questions leading to the best decision for patentable invention. This represents the first advantage: the answers to the previous questions are determining which questions are upcoming next. This means we don’t take into account the same questioning for each result and if find it relevant in the perspective where we are in a case-by-case approach. The second advantage is that possible outcomes number three: trade secret, patent but also defensive publication, which is a relevant alternative to choose in certain case. A regret we may have by looking at this model is the simplicity compared to the other one.
The Jorda model is about computation of points obtained following the answer to each question. This aspect is leaving me perplex on several points. First, only extreme points are directly leading to an outcome being trade-secret for high score and patent for low score. Average score, according to Karl F. Jorda, “suggests that it doesn’t really matter which approach is followed initially”. I understand this idea of leaving a space for invention that the two options suit, however, in a case-by-case approach like this one I feel like a more precise answer in needed. Second, such a computation may lead to same results for totally different situations. For instance, a set average point responses (5-6-5-6) can be equal to a set of extreme but opposite responses (10-1-10-1). Nevertheless, this model also has advantages, such as the three categories it takes into account (marketing, technical and legal) and the number of answer to give is higher than in the six-step approach which means it may be more precise.
So far, I cannot really choose either one or the other model, even though I have a slight preference for the first model, my arguments are no enabling me to decide. They both take into account relevant features to distinct whether a patent or a trade secret suits the most an invention, such as time efficiency but less, even not at all, immediate (or not) effect, level of registration costs and intensity of effective competition. This is why I end up to the conclusion that both models could be used complementarily in order to take the most of each.
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All of the inventors have to make the difficult choice between Secrecy and Patenting when they want to protect their innovation. Both have advantages and disadvantages.
A patent is a legal right granted by a government to stop others from copying, manufacturing, selling or importing your invention without your permission for a period of usually twenty years. Moreover, you can license your patent to others or sell it. This can provide an important source of revenue. But there are many disadvantages with the patent. The main disadvantage is that you have to reveal certain technical information about your invention even if you shouldn’t go into details. The procedure for applying for a patent can take a lot of time before the patent can be granted. Patent an invention can be really expensive and you’ll also need to pay annual fees and you need to be prepared to defend your patent which can as well cost a lot.
If you choose the other way of protection, the trade secret, the advantages are that: is cheap, it is not limited in time, it doesn’t involve any registration cost, it has an immediate effect, and you don’t have to reveal anything. But the big disadvantage is that you have no legal protection against the competitors who will try to duplicate your invention. A good example of trade secret is the secret recipe of the Coca-Cola Company.
To help innovators with this difficult decision (patent or trade secret), two authors worked on the question. The results of their works are the roadmap of Daizadeh et al. (2002) and the one of Jorda (2007). So now we will compare the two models to try to determine which one of the 2 roadmaps is more accurate.
First of all, the Daizadeh’s roadmap consists of 6 different steps or questions. You can answer to these questions by YES or NO. You need to pay attention that this models leads to the three possibilities: patent, trade secret or defensive publication.
The Jorda’s work is a combination of 11 different questions divided into three parts: marketing, technical and legal. The innovators have to answer on a scale going from 1 to 10. The answers are then totalized and the strategy to adopt is defined following the total score. If the score is above 75, trade secret should be recommended and if it’s lower than 45, patenting seems then to be the best solution. At this stage, we can already say that the Jorda’s model is more sophisticated than the Daizadeh’s one. It is also more recent.
We can also notice that both years of publication are not so recent. The most recent was made in 2007 and since then the economic situation evolved.
Therefore, it must be taken into account that these 2 methods are no longer totally up to date as they don’t take into account the world evolution since 2007: the various crisis, the evolution of technologies, the geopolitical context,…
To conclude, both models can help the inventor to make his decision. The Jorda’s roadmap is more accurate due to their 11 questions in 3 fields which make them cover a bigger scope around the innovation. The Daizadeh’s model, being simpler, makes it easier to quickly get an idea about what to do.
Show lessAccording to me, the two roadmaps are complementary and it could be a good idea, when possible, to use both of them as this type of decision is not at all easy to make.
But be careful! It is also important to consider that these 2 models don’t take into account all the external factors and that those taken into consideration are not up to date!
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Both sources offer a roadmap helping innovators to choose the most effective way to protect their innovation. The two solutions discussed in the articles are secrecy or patenting. However, Daizadeh et al. also deal with a third and more defensive option, namely the publication of the invention in technical or trade journals.
The two papers rely on several questions to decide the best way to protect an invention. I will try to highlight the divergences and convergences between the two of them.
First, let’s have a look at the convergences. Both articles seem to agree on several points. First, an innovation that is easy to reverse engineering or to discover independently should be patented. Second, an innovation likely to be licensed should be patented. (One can note that Jorda’s article also include the likelihood of the innovation to be a commercial product as an incentive for patenting.)
Some questions, even if not explicitly the same, implicitly deal with the same matter. Some of them lead to the same conclusions but some diverge in their solutions. First, Daizadeh et al. argue that if the innovation happens to be in a new area of technology, then it should be patented. Jorda, him, deals with the concept of competitive advantage. He says that if the exclusivity on the innovation grants a competitive advantage (or if the competitor exclusivity leads to a great competitive disadvantage), then the innovation should be patented as well. One could argue that those two concepts are very linked. Indeed if your are playing in a new area of technology, then of course having the exclusivity leads to a great competitive advantage, since you are the one selling this new kind of technology. Therefore, it seems that the authors of the two articles agree on the patenting solution for this point. Secondly, Daizadeh et al. pretend that if the innovation is part of a technology area, which evolves quickly, then it should be kept secret. On the contrary, Jorda claims that the commercial significance of an innovation is likely to be limited in time, then it should be patented. One could argue that if the area evolves quickly, then the significance of the innovation in this area will be limited in time. Indeed, in a fast-changing area, improvements and innovation constantly happen. The authors of the two articles therefore seem to diverge on the solution to protect innovation for this particular point.
Finally, some aspects were only taken into account in one of the two article and represent therefore divergences. Daizadeh et al. argue that if a public disclosure is necessary, then the innovation should be patented. They also highlight the fact that if the potential market revenues are bigger than the cost associated to the patent, then the innovation should be published. As already mentioned, this option isn’t handled by Jorda’s article.
Furthermore, Jorda deals with legal questions that aren’t part of Daizadeh et al’s questionnaire. He argues that if a patent’s validity is likely to be upheld, then the innovation should be patented. He also says that if the dissemination of the innovation from within the business would be very hard to control, then the innovation should be patented as well. Besides, he argues that if it is difficult to determine if competitors are using the innovation, and therefore to charge infringement fees, then the innovation should be kept secret. Finally, he also says that if an alternatives (“design around”) to the innovation would be easily find or if its disclosure require or allow access to other unprotected data, then it should be kept secret.
To conclude, both articles seem to handle and agree on most of the marketing and technical questions, (except one). Jorda also handle legal questions that are not part of Daizadeh et al’s questionnaire.
Sources:
– Daizadeh, I., Miller, D., Glowalla, A., Leamer, M., Nandi, R., & Numark, C. (2002). A general Approach for determining when to patent, publish, or protect information as a trade secret. Nature biotechnology, 20, 1053-1054.
– Jorda, K.F., Chapter 11.5, “Trade Secrets and Trade-Secret Licensing,” Intellectual Property Management in Health and Agricultural Innovation: A Handbook of Best Practice. p.1044. 2007-2012.
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In both papers, authors propose roadmaps to help inventors decide on the most effective way to protect an innovation. They can either choose to patent their innovation or keep it as a secret. We can describe a patent as a contract between the inventor and the public which stipulates that in exchange for the disclosure of their inventions, creators get a right of protection. Secrecy means that there will be no publication of the discovery and therefore no one will have access to it. However, no rights of protection are attributed. Some enterprises may also choose to patent some sub-innovation (fragment of an innovation) and keep the rest secret.
The roadmap proposed by Daizadeh et al. also includes the possibility of printing a defensive publication which will prevent competitors to patent a similar invention. Even though Jorda only focuses on patent and secrecy, the paper takes into consideration that in some cases either approach can be followed. Both questionnaires deal with marketing, technical and legal issues.
The first roadmap proposed by Daizadeh et al. is made out of six general yes or no questions for which different answers lead to different questions which, in the end, will lead to a protection method. Similarly, the second roadmap consists of eleven questions but this time the inventor’s answer is based on a scale from 1 to 10. It is the total of each question that is, in the end interpreted. Higher “score” means that a trade-secret protection is favorable while a lower one means that patent protection would be, in this case, more advantageous. We can conclude that the latter roadmap might be more complete and precise than the first one as it includes almost twice as much questions and proposes more varied answers.
If we look more closely at both roadmaps we notice that most questions overlap one another and are rather similar. Per example both take into account the issue of reverse engineering, the rapidity at which the technology will develop, etc.
In conclusion, I think both models resemble one another and should be used alongside to obtain an answer adequate to each situation and as precise as possible.
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The big question regarding IP protection is on one side, which kind of protection should be chosen and on the other side how is a decision made, or more precisely which questions has an innovator to ask him/herself?
As suggested above, there are three main options to choose from: Trade Secret, Patent or Publishing. Before comparing the two questionnaires for assessing which kind of protection to choose, let us have a short look, what each of the three options may imply.
1) A trade secret is pretty much easy to understand. It doesn’t require any registration, does not have any time constraint and most important is not required to disclose any sort of information to the public. However, it might be not an effective tool for new innovations due to it’s difficult enforceability when it comes to court and the opportunity for competitors to discover the secret and patent it for themselves.
2) A patent owns the exact the opposite characteristics of a trade secret. This means that its huge advantage is the effectiveness against imitators and a 20-year long protection on the market, which usually is enough to benefit from it. The disadvantage is its high cost for registration and the disclosure of sensitive information to the public.
3) Publishing, is a common and rapid way of disclosing scientific knowledge to the public. It therefore prevents any possibility of patenting for competitors. When looking at the graphical roadmap above, we see only in one case that an innovation should be published. That is, when potential revenue that could be extracted from the innovation is smaller than the litigation costs of a patent.
Comparing both, the roadmap by Daizadeh et al. provides three options (trade secret, patent, publish), whereas the questionnaire differentiates only between trade secret (above 75 points), patent (below 45 points) and a mid-range, where the approach isn’t that important and the decision rather depends on its context.
Both assessments cover the main three areas (marketing, technical, legal), however weights are given differently to each part. Daizadeh et al. puts most weight on the technical analysis of the innovation (three out of six questions), followed by legal and marketing questions, respectively. Jorda distributes all eleven questions equally to each category.
In both questionnaires marketing questions target, whether information needs to be disclosed and by how much competition can take advantage of this. Regarding technical questions both address the issue of reverse engineering, but also consider the market environment. Here in my opinion taking both together, the questions complement each other pretty well. Lastly, in legal terms both ask for the willingness of licensing the innovation.
Summing up, both questionnaires deliver questions from the main three categories: marketing, technical and legal, in order to decide which IP protection to choose. They complement each other with the questions they address in each category, but show differences regarding possible outcomes and the importance of certain questions within the main three areas.
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Both roadmaps are made to guide innovators to choose if the keep the secret of their innovation or if they publish their idea in a patent. Patents allow innovators to be the only users of their new technology but this is only for a time. Everybody has access to the process so once the delay is over the author is not protected of the imitation anymore. Whereas keeping the secret does not protect inventors of imitations. However if they reach to keep it secret, their idea won’t never be imitate because nobody has a reason to discover it (no publication).
Show lessThe inventors’ choice between patent and secret is so very important.
Both roadmaps offer a guide to the best choice depending to the innovation. The first one (the one in the article) starts to one point and then 6 questions are asked which the only possible answers are YES or NO. Depending to these answers a path is emerging which is leading to three solutions: defensive publication, patent or trade secret. While the second roadmap (Jorda 2007) is built like a list of 11 questions where the decision-maker notes on a scale from 1 to 10 that the proposition happens. The article’s authors offer explanations for each question. Once all the questions are answered, the decision-maker calculates the total score which will figure out if he should chose trade secret protection, patent protection or if this choice does not really matter.
According to me, the second model is more precise and adaptable to all innovations than the first one. Because they are more questions and that these questions offer more that only two radical answers (yes or no in the first roadmap). The second model allows that all innovations do not have to be protected by a patent or a secret but sometimes they do not need any protection because they just do not meet criteria. However, the roadmap in the article offers a third solution which is not suggested in the Jorda’s one: the defensive publication. Moreover, questions in this map are more related to each other and are constructed like a pad which might make sense in certain situations which are less complex.
To conclude, both roadmaps offer to inventors ways to decide how they should protect their innovations. The first roadmap (in the article) is easier and could be a good way to begin the reflection. Whereas the second roadmap is a bit more complex and complete and could be decisional.
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The two roadmaps follow different approaches with many essential criterion overlapping. With the Daizadeh roadmap, one only has to answer simply yes or no questions step by step to find out the most suitable strategy. Although it is easy to operate, in my view it seems oversimplified and too absolute. While with the Jorda roadmap, one has to answer each of the 11 question on a scale from 1 to 10 to get a total score and higher score favors trade-secret over patent. More factors are taken into consideration including the enforcement issues and factors that counterbalance each other in this roadmap (e.g. Question 5&6), which is more complete and realistic. However, I find it quite arbitrary to give the 11 questions the same weight and the score one may give to each question can be quite subjective, thus the reliability of this roadmap is in doubt.
Show lessWhen comparing Jorda roamap questions with the steps of Daizadeh roadmap, we can find many differences as well as many overlapping factors.
Question 1 is similar to Step 5, they both suggest, if you are potentially interested in licensing (or commercializing) the invention, patent is preferable to trade-secret.
Question 2&3 are related to Step 6. Question 2 and Step 6 both suggest patent when the commercial edge is significant enough. But when the commercial edge is not significant enough, Question 2 suggests trade secret while Step 6 suggests defensive publication to establish prior art against competitors. Meanwhile, Question 3 suggests patent publication as the defensive strategy.
Jorda argues that life span is not a particularly useful criterion (although Question 4 about life span is given the same weight as other questions, which is kind of confusing) while Step 3 suggests for technology areas that evolve quickly, secret is preferable. That is one contradiction.
Question 5 takes into account the ability to design around an invention while it is ignored in the Daizadeh roadmap.
Whether a competitor can ascertain the nature of the development from the product in Question 6 is basically the same as whether the idea is easy to reverse engineer in Step 2.
Question 7 takes into account would disclosure of the development require or permit access to other unprotectable information, while it is ignored in the Daizadeh roadmap.
Whether others could arrive at the same development independently in Question 8 is also considered in Step 2.
Question 9, 10 and 11 are about enforcement issues which are not taken into account in the Daizadeh roadmap. Question 9 is about weak patent ignored by competitors and for which the company is unwilling to sue. Question 10 is about the risk of disclosure with trade secret. Question 11 is about whether detecting infringement is difficult with patent protection. If a strategy cannot be enforced well, another strategy might be preferable.
After comparing the two roadmaps, as far as I am concerned, when choosing a strategy to protect an innovation, it is better to first examine the most crucial factors, i.e. the points where the two roadmaps overlap, then examine other factors in the Jorda roadmap that are not in the Daizadeh roadmap, such as the enforcement issues, to determine which one of the three strategies suits most.
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Following WIPO’s definitions, a patent is an exclusive right granted for an invention – a product or a process – that provides a new way of doing something, or offers a new technical solution to a problem, while a trade secret is considered any confidential business information providing a competitive edge to an enterprise. As stated by Michael B. Fein – Eckert Seamans Cherin & Mellott – the choice of patent vs. trade secret depends [among other factors] on likely patentability and the possibility of maintaining secrecy.
Patents usually represent a more secure method to protect intellectual property due to the existent patent law and rights. A patent gives the inventor the right to stop others from copying, manufacturing or selling the invention without permission (alternatively, the inventor may license the patent, using it as an important source of revenue), and thus it may even help to reduce competition. Hence, it is very common for inventors to use patents in the highly competitive technological sector. However, there are situations where resorting to trade secrets is the best option. To start, some inventions or manufacturing processes do not meet the patentability criteria, and thus can only be protected as trade secrets. Additionally, trade secrets have the great advantage of not being time limited, as well as having immediate effect.
The two proposed roadmaps – Daizadeh et al. (2002) and Jorda (2007) – were developed to support the decision-making process of seeking patent protection or maintaining a trade secrecy. The first model (D) proposes a 6-step approach with yes or no questions, leading to three possible solutions, i.e., instead of focusing only in the patent or trade secret outcomes, the authors suggest a defensive publication alternative. Hence, this model is a ‘simplified’ approach based on the analysis of few crucial questions. On the contrary, the second model (J) proposes an 11-question questionnaire, answered in a scale from 1 to 10, where a total summed-score below 45 favours patent protection and a score above 75 would favour trade secrecy. However, these two methods also present crucial similarities, such as the importance of how easy it is to reverse engineer, as well as the influence of time and how fast the market changes.
To conclude, taking into consideration both the differences between patent and trade-secret protection and the characteristics of the two roadmap models, it is my opinion that the most accurate method would be using a combination of both. Inventors can use the D model to benefit from the main (summarised) points to address when pursuing intellectual property protection, while complementing with a more in-depth analysis provided in the J model, thus providing the best outcome of which strategy to follow.
Additional Sources:
Show lesshttp://www.iphandbook.org/handbook/ch11/p05/
https://www.nibusinessinfo.co.uk/content/advantages-and-disadvantages-getting-patent
http://ocpatentlawyer.com/benefits-of-patent-protection/
https://questfusion.com/trade-secrets-versus-patents/
http://www.wipo.int/sme/en/ip_business/trade_secrets/patent_trade.htm
http://www.lrrc.com/04-01-2007
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The goal of this comment is to compare patents versus secrecy, and two models that should allow companies to choose between the two.
First of all, let’s study the advantages of each method.
The choice would be in favour of the trade secret in at least two cases. Firstly, when the innovation does not meet the patentability criteria. In this case, the trade secret would be the only choice. Secondly, when the market moves fast, or if being first on the market gives a competitive advantage, the fact that trade secrets have immediate effect will clearly help the company. To this, we could add that trade secret protection is not limited in time, and can thus continue indefinitely, or until the secret is revealed to the public. One last advantage is that there are no prosecution costs or maintenance fees, even though it can still be expensive considering the costs necessary to protect the secret.
Companies would prefer patents in other situations. Trade secret does not protect you if another company finds the same idea by other methods, or by reverse engineering your product. This company could even then patent it. In this case, it is better to be the first to file a patent application.
However, I would like to point out that when an innovation is complex, the answer doesn’t need to be “patent all”, or “use trade secret for all”. A complex innovation is composed of several parts, and the company could choose to patent some, and to use trade secrets for the others.
Let’s move on to the two models. The first is the road map proposed by Daizadeh et al in 2002, the second is another roadmap introduced by Jorda in 2007. They have common points. Both talk about reverse engineering, time, market revenues, or equivalent, for example. However, they differ on many things. The first model is a 6-step approach, with yes or no questions, and that takes into account a third option: disclosing the idea directly to trade journals. By contrast, the second model is an 11-step approach that grades questions on a 1 to 10 scale. The second could seem best as it is more complete, and asks for more reflexion on the part of the company. It requests to scale the answer, which could help companies when the observation is more nuanced than just yes or no. However, both would be advantageous in different situation. The fist model offers a quick idea of what would be the best option for the company, while the other offers a thorough questioning and an in-depth reasoning. To use both models would allow the company to not only grasp easily the best option, but also to confirm the intuition.
In conclusion, I believe a complementary use of both models would be the best for the company, as it would fully take advantage of the models’ interests.
Sources:
Show lesshttp://www.wipo.int/sme/en/ip_business/trade_secrets/patent_trade.htm
http://www.lrrlaw.com/04-01-2007/#.VkFkV4T8nv4
http://www.iphandbook.org/handbook/ch11/p05/
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Both the two methods are meaningful for helping innovator to decide whether to patent a new development or keep it trade secret. J‘s(Jorda (2007)) questionnaire seems much more delicate than D’s (Daizadeh et al. (2002))roadmap, due to it has more questions and the answer for each question has ten partitions of grade against only yes or no. In order to compare the two roadmaps, more details should be pay attention to.
The two methods have some similarities. For example, step 2 in D’s “Is the idea easy to reverse engineer or discover independently?” is similar to question 6“could the product be ‘reverse engineered’?” and question 8“Is it likely others will independently arrive at the same development” in J’s, and they give the same advice. Also, step 3 in D’s is similar to question 4 in J’s, step 5 in D’s is similar to question 1 in J’s and step 1 in D’s is similar to question 10 in J’s, although the advice they give may differ in some circumstance.
However, the two methods also have differences.
First, the D’s offers a third solution to protect innovation besides keeping the innovation secret or patenting it. That is to publish a defensive publication. While the J’s only offers the latter two solutions. Considering that in real cases, it maybe not simply to choose secrecy or patent for an innovator, defensive publication is a better choice when the potential market revenues outweigh the patent and associated costs.
Second, in question 2 and 3, J’s method adds the competitive advantage and disadvantage to the decision making process, which didn’t mentioned in D’s. Competition is an important factor to be considered. It would be possible to weigh the potential benefit or loss before making a decision on whether to patent or not.
Besides, questions 9 in J’s remind a legal aspect that a weak patent should not be patented, in fact, once patented, the chance for trade-secret protection lost because publication. This is a legal aspect that didn’t proposed in D’s.
The two methods are complementary.
By comparing them, I suggest that the two methods could be used in real cases.
When an innovator considering whether to give a development patent or secrecy, the D’s methods can be used firstly to get a simple recognition as it is easy to get a result, yes or no. Then find more details in J’s and analysis them. At last, make a decision at the framework of both D’s and J’s.
In conclusion, both D’s and J’s methods are not perfect. However, use them complementarily will benefit more when making decision on patent or not.
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When we think of patenting an idea and maintaining trade secrecy, we have to consider revenues and costs.The roadmaps put forward by Daizadeh at al.(2002) and Jorda (2007) do overlap and complement each other in several aspects but also have some important differences.
Show lessTo begin with, analyzing the roadmap by Daizadel at al, has six steps or questions to guide us towards an answer but interestingly the authors added a third option on top of patent and secrecy which is defensive publication. In contrast Jorda (2007) in their roadmap focuses on patent and trade secret.
The roadmap of Daizadel is easier than that of Jorda which have 11 questions and each question should be answer on a scale from 1 to10. By summing the score of each question, the innovator can get a final value which will range from 11 to 110 and different range do have different advice. Comparing it with Daizadel at al model we can conclude it is more precise because it uses mathematical approaches to give advice.
Furthermore, the roadmap of Jorda ‘s 11 questions is divided into three parts; marketing, technical and legal. Comparing the two roadmap i find out they have a similar idea on the technical aspect. Jorda (2007) takes into account many different types of innovation in the form of development. Again it adds a legal aspect in its questionaire in question 9 to 11.This helps to defend the firm’s interest.
To conclude, the two roadmaps help guide us towards the answer and its difficult to choose which one is the best since they both have their advantages and disadvantages. So in my opinion it is best to work with both roadmaps.
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All choices have pros and cons in today’s world, and and nowhere is it more apparent than in the technology sector. The task of an inventor is to make easy the lives of humanity. However, it is a strenuous process, and thus the inventor needs some form of protection and returns. These can be found in the form of patents or secrets. Boith of these have their advantages and disadvantages.
Also, the other question of where the firm should innovate in- Idea market or product market- is also extremely important.
I will examine the two models, discuss their pros and cons, contrast and their complementing properties. Then I will put forth my personal opinion in favour of one of the models
The two models are Daizadeh (2002) [M1] and Jorda (2007) [M2].
Show lessM1 asks a series of intuitive questions- six, to be precise. These questions point to several aspects of the invention, and with the appropriate responses, it is determined whether or not there should be secrecy or a patent. However, there is also a third option: Publishing. This is explained with the help of the diagram, and clearly shows that publishing is a viable option under a set of circumstances.
M2 is more recent than M1. It asks 11 questions, and each question is scored from 1-10. A score of below 45 indicates that the Patents are a better solution, and above 75 indicates that the invention should be a trade secret. The middle zone between 45-75 is a zone where either option is possible, but the ultimate decision is then with the weighing of the pros and cons of patents and trade secrets. There is no third option.
M2 is more recent, making it more relevant, but it has a caveat: there is no clear ‘Yes’ or ‘no’. Therefore, it is a bit more flexible- the final outcome is not so sure, as one question may point towards one direction may be annulled by the score of another. M2 is more precise, asking three types of questions- Technical, Legal and Marketing. The second model is more detailed than the first. M1 ends up ignoring the competition level or market positions (brands, market dominace etc). M1 also ignores the legal aspects of an invention. Unlike M2 does not offer an alternative to patents or trade secrets, which is publishing. In my opinion, having a viable alternative keeps the options open. M2 can be integrated with that choice with simply one more question.
Both models seek to facilitate the decision making process for patenting or keeping an invention a trade secret. These rules are however guidelines and hence the final decision rests with the inventor. Sometimes, keeping a trade secret is better than acquiring a patent.
In my opinion, both models are good, but Jorda (Model #2) is a better fit and more precise. The addition of a question regarding publishing can help provide an alternative and also change the scores towards, hopefully, a better option and choice.
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Secrecy or patenting? All the innovators are facing this choice when they want to protect their innovations. In order to help them with this difficult decision, several authors have worked on the question. The results of their works are known as the two roadmaps of Daizadeh et al. (2002) and Jorda (2007). The purpose of this comment is to give some practical tips to help innovators to choose between the two different models.
Before saying which one of the roadmaps is more accurate, you need to know the pros and cons of secrecy and patenting. If you choose the secret way, you have no legal protection so everybody can copy your innovation. But if you are able to keep the innovation secret for a long time you might make higher profits that if you had been granted a patent. A famous example is the secret recipe of the Coca-Cola Company. This way of protection is linked with a high uncertainty; you need to take disposition to avoid that your competitors discover your innovation. For the patent, there is a legal protection but you need to reveal your innovation to everybody. The main advantage is that you will be certain to be the only one using it for twenty years. For instance the patents are used in the drugs industry.
Now, we need to spend some time to compare the two models. The first difference that we are able to notice is the date of publication. The Daizadeh’s roadmap is five years older than the Jorda’s one. But between today and the publication of the Jorda’s roadmap a lot of things have changed. The economic crisis appeared, the technology is changing faster,… You need to pay attention to all this externalities if you are wondering what is the best between secrecy and patenting. So for this first difference the Jorda’s roadmap seemed to be more accurate thanks to the fact that it was published later.
When you analyze the content of both roadmaps, another element is really different. It is the fact that Daizadeh only suggest questions with binary answers, “yes” or “no”. On his roadmap Jorda decided to ask more detailed questions with a scale that goes from one to ten as answers. The fact that you can answer with nuance is better because a lot of choices in our current world are not based on binary decisions. You need to weight pros and cons before taking a final decision. Another important factor is that Jorda covers a larger scope around the innovation because his model is based on eleven questions. That is five more than the other roadmap. So on the content too, the Jorda’s roadmap is more precise than the Daizadeh’s model.
To conclude, if you are an innovator, I will suggest you to use the Jorda’s roadmap to help you in your choice. This model looks like to be more accurate, useful and more adapted to our current environment than the other one.
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The decision whether a patentable idea has to be patented or kept secret isn’t an easy one. Yet, two roadmaps have been developed in order to help managers take the right decisions. The aim of this comment is to compare those two roadmaps and highlight where they overlap, contradict and complete each other. In order to make it easier lets call the roadmap proposed by Daizadeh et al. (2002) roadmap number 1 and the one proposed by Jorda (2007) roadmap number 2.
The first roadmap consists of 6 yes or no questions leading to one of the three possible solutions (patent, trade secret or defensive publication) or to another question while the second roadmap consists of 11 questions to the which innovators have to answer on a scale going from 1 to 10. The answers are then totalised and the strategy to adopt is decided following the total score. If the score is above 75, trade secret should be recommended and if it’s fewer than 45, patenting seems to be the best solution. Also, if the total score is between 45 and 75, both strategies seem to fit and it’s not really possible to give a unique solution.
The first main difference between the two models is the fact that the first one proposes three solutions: patent, trade secret and defensive publication, while the second one only leads to a patent or a trade secret. Moreover, the first roadmap can directly lead to a strategy without having to answer all the questions while with roadmap number 2 innovators have to wait for the total score of all the questions to make a decision. This involves that the first model is easier and quicker to use but may also seems too simplistically sometimes. On the other hand, the second model may be more complete but it is also true that it is more complicated. It is not always easy to decide which mark to attribute to each question, which can lead to a certain form of subjectivity. Moreover, the second model is also a bit less radical because it may accept multiple solutions. If the total score is between 45 and 75 it admit that both solutions (patent and trade secret) could fit the situation.
Aside from the differences on the form, the two roadmaps also defer from each other on the content. For example, in roadmap number 2 there is a question about the disadvantages for a firm that would appear if one of their competitors obtains exclusivity. This point is not mentioned in the first model. That’s also the case for subjects like the competitive advantage (question 2), alternatives to the innovation (question 5), access to other unprotectable information (question 7) or the respect of the patent by the competitors (questions 9 and 11). All those subjects are addressed in the second roadmap and not in the first one. Similarly, the first model is the only one to care about the newness of the area of technology in which the innovation is developed (step 4).
However, there also exist lots of similarities between the two roadmaps. Step 5 of roadmap number 1 and question 1 of roadmap number 2 are both about the licensing opportunity. Similarly, both roadmaps also address the questions of the speed of development of the technology (step 3 and question 4) and the reverse engineering problem (step 2 and questions 6 and 8).
To conclude, we can say that those two roadmaps are pretty different even though they try to solve a same problem. Nevertheless they also are very complementary. The first one is a bit less detailed than the second one but it enables to have a more schematic view on the problem, while the second one allows to review much more aspects of the situation and have a wider approach towards it. That’s why I think that both tools should be used simultaneously.
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There are discussions whether or not you should patent a product. Indeed, In addition to precise criteria that allow you to patent an innovation, there are cases where it is just not the appropriate way to manage your technology. The patent expenses can be greater than the turnover or simply, patent can expire and everyone can use your technology preventing you from future revenues. The option that counters this second outcome is a trade-secret. But both choices have their pros and cons.
In this comment I am going to talk about two models that inform innovators whether a patent or secrecy is best for a development. The first one is the Daizadeh et al. roadmap and the second is the Jorda Roadmap. I will start by going through the characteristics of both models, explain in what way they contradict, overlap or complement each other and conclude with a personal opinion regarding the models.
The Daizadeh et al. model (2002) takes the inventor though six steps (or questions). It is important to point out that it considers a third option to patents and secrecy: publishing. The answer to the questions (yes or no) defines if one must choose to patent, keep the secret or publish its idea. There is a very intuitive roadmap in which the inventor move along those 6 steps towards a unique destination: patent, secrecy or publishing.
The Jorda model (2007) is more recent. It asks 11 questions to the innovator. The answers have different scores, 1 to 10, and a total score is computed at the end of the questionnaire. People with lower scores (below 45) are advised to patent and ones with higher scores are told to go for a trade secret protection. There is a tampon zone between 45 and 75 where it doesn’t matter which one you choose but must take into consideration whether it is a process (secrecy is better) or a product (patent is better).
The first thing to notice is that the second model came out 5 years later which means that it should be more relevant. Moreover, the latter is based on a score not on radical answers such as Yes or No. It makes the final judgment more flexible. It means that even if one parameter suggests it should be one way, other questions can balance the score and thus reverse the final outcome. Also, the second model is more precise since it offers three range of questions: marketing, technical and legal. Indeed, It seems that the newer model focus on more details than the first one. The first model ignores external factors such as competition level or market position (brand awareness, market shares …) whereas the second one focuses its first questions on marketing aspects. Plus, the legal aspect is non-existing in the first model whereas questions 9-11 deal with that matter in the second model. Finally, the second model doesn’t offer the choice of publishing which is in my opinion a good idea. However model 2 includes that choice with only one question that can be easily added to the second model
All in all, both models are there to facilitate a decision to patent or keep the development secret but they must only be taken as advice not as non-bending rules. The perfect counter example stated in an article is coca cola. A low score at the first commercial question (second model) should have made them patent their recipe but the secret here was obviously the best option. So yes, both models have valid points but they are simplified. In my opinion the second model in more precise for the reasons I stated previously especially if an extra question is added regarding a publishing.
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It seems that the choice between Secrecy and Patent has always been tough. Patent is a really good way to reward the inventors for disclosing their inventions. A patent is a legal right of exclusion so the patent holder can prevent others from commercially use the patented innovation. The exclusivity enables higher returns on investment. Moreover, you can make the invention tradable. It means that you can license your patent to others. There are many disadvantages with the patent; you have to reveal your invention, patent an innovation can be very expensive, and it takes a lot of time for a patent to be granted. So sometimes, trades secrets are more likely to be used. Why? Simply because it’s cheap and you don’t have to reveal anything. Also, if the market moves really fast, you will probably not have time to wait for the patent to be granted. Obviously, trade secrets can also have disadvantages ; you have zero protection against the competitors who will try to duplicate your invention and secrets leak quite often There is another solution which consists in a more defensive strategy. Indeed, the inventors can also choose to publish inventions, this would prevent the others from patent an innovation and so prevent them to claim on a piece of property right..
In the end, it appears that it is quite complicated to figure out what to do when it comes to innovation protection. Trade Secrets, Patents and Defensive Strategy have pro’s and con’s. That’s why, in my view, the roadmaps of Daizadeh’s and Jorda can be really helpful. But a comparison has to be made between those two charts.
Here, we face two roadmaps that are quite different. In 2002, Daizadeh et al. established a six questions roadmap that can be represented as a graph. Basically, the idea is simply to answer each roadmap’s questions by Yes or No to know whether you have to use patent, secrecy or publishing strategy. In 2007, Jorda designed a roadmap which contains 11 questions. To answer those questions, you have a scale going from 1 to 10. In my opinion, the roadmap of Jorda seems to be more complete as it contains more steps. Moreover, to answer the Jorda Roadmap’s questions, you have to give a weight to your answer, you have a scale. This roadmap goes deeper into the reasoning, it is not all black or all white. In the roadmap of Daizadeh, you can only answer the questions by “yes” or “no”, it is binary. But sometimes, you may not know or not be sure what is going to happen so it can difficult to answer the questions. We can also note that Jorda’s work include a legal aspect, which can be really decisive in the final choice for patent or secrecy and which was not took into account in the Daizadeh’s Roadmap. However, we must be careful when making a comparison between those two works. Indeed, Daizadeh’s work allows inventors to choose between Trade secret, patent and Defensive publication but in Jorda’s work, the Defensive publication has not been taken into account.
I think those two roadmaps were carried out for the same purpose, so it is quite difficult to choose which one to use. Indeed, on the one hand, Jorda’s work is more complete but on the other hand, Daizadeh’s work allow us to decide whether you use patent or secrecy more rapidly. For example, if you are sure that the public disclosure of your invention is necessary and that the potential revenue is greater than the cost of IP processing and litigation, then in only two questions, you know you have to patent the innovation. It enables you to spare some extra costs due to extra research carried out to find out what to do with the invention.
To conclude, I would say that the two roadmaps can be quite helpful regarding the decision of how to protect the innovations but I must confess that I am a bit perplex because I don’t think that the roadmaps cover every situations. I think the two roadmaps are quite complementary and therefore that inventors should use them in parallel.
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In this comment, I will compare two models build to decide the most effective way to protect an innovation. According to these roadmaps, three ways exist to protect this innovation : trade secret protection, patent protection and defensive publication.
Show lessWhat are their differences? The first difference between these models is the number of questions they contain. Indeed in the first one, the model consists on 6 questions while the second one contain 11 questions. Secondly, another difference, that is probably the most important, is the way of evaluating each question. Indeed in the first model, questions are answered by « yes » or « no » while in the second model questions are answered on a scale from 1 to 10. Thirdly, there’s a difference between the number of possibilities resulting from the model. In fact, it exists in the first one a third way to protect idea (defensive publication).
Concerning their overlapping, both of these frameworks are a guide for companies. Moreover, they include marketing and technical questions. Indeed step 1 corresponds to question 7, step 2 corresponds to question 6 and step 6 corresponds to question 2 even if questions are more accurate in the second model. However, Jorda’s model includes some legal questions (9-11) that are not present in Daizadeh model. It’s one of the reason why this model is more accurate.
To sum up, we can say that the first model is simpler, quicker but less detailed. However in my opinion, both models should be used complementarily. A proof is the following example: If a company used Jorda’s model and found a score between 45 and 75, Daizadeh model could be helpful to determine the protection to chose.
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The goal here is to compare two models and to see in what extent they overlap, they contradict or they complement each other. With a patentable idea, innovators have to choose a strategy in order to protect their idea from exploitation of competitors. Intellectual property rights help innovators to have the right incentive to innovate and to recover their costs. Several IPR exist but the roadmap proposed by Daizadeh and al. (2002) focuses only on three strategies which are patent, trade secret and defensive publication while the roadmap by Jorda (2007) helps to choose between patent and secrecy. The choice of the strategy that innovators will follow is capital for their future returns on investment. If they make a wrong choice, competitors could take advantage of the situation and exploit the idea. Daizadeh and Jorda developed roadmaps to help innovators in their strategy’s choice.
To make it easier, I will call the Daizadeh roadmap “model 1” while referring the Jorda roadmap as “model 2”. The intention is now to compare the two models to see how they differ one to the other.
First, we can notice that the model 1 proposes a third strategy which is defensive publication while model 2 only focuses on the two options: patent or trade secret. Defensive publication (also called defensive disclosure) prevents competitors from getting a patent on the invention. When the idea is disclosed, it becomes part of the public domain and is considered as prior art. This strategy is usually chosen when innovators do not want to bear the costs of a patent. Indeed, patent fees can be large and innovators prefer to disclosure their innovation before competitors copy the idea. Model 2 does not take this strategy into consideration.
Secondly, Model 1 proposes six steps. Each step is a yes or no question and the innovator is conducted to the most suitable strategy considering his answers. The questions cover different areas which are important in the IPR field. First, if public disclosure is necessary, trade secret is directly excluded from the strategies. It is obviously impossible to keep the patentable idea secret if we disclose it. Reverse engineering follows the same idea in the way that if the invention is easy to reverse engineer, trade secret is not a viable option. At the opposite, if the technology changes quickly, trade secret could be a good choice because the competitors will not have the time to copy your idea. Patent takes time while secrecy does not. If the area of technology in which the innovation takes place is new, patent is the best strategy. The opportunity of licensing the innovation should be taken into account in the strategy’s choice. Licensing the invention can be interesting for the innovators. Lastly, if the expected revenues do not outweigh the patent costs, defensive publication seems to be the best option for the innovators’ idea.
While Model 1 is a six steps model, Model 2 is an evaluation questionnaire including eleven questions about different areas. The method is different in the sense that each answer is on a scale from 1 to 10 then the responses are sum up which gives a total number that range between 11 and 110. If the sum approaches the higher end of the scale (above 75), trade-secret protection would seem favorable; a sum at the lower end (below 45) would suggest that patent protection would be more advantageous. We find here some fields from Model 1. Indeed, licensing, new technology, reverse engineering and disclosure (question 1, 3, 4, 6, 8, 10) are both present in Model 1 and 2. However, some questions from Model 2 are not present in Model 1; design around, chances of patent’s validity or the difficulties to know if competitors are using the development inter alia.
In conclusion, we can say that the models have similarities and differences. Nonetheless, the two roadmaps have the similar goal of helping an innovator choosing the best strategy for his patentable idea. One of the main differences is the third option proposed by the first Model 1, defensive publication which is totally absent in Model 2. The first model is easy to conduct with yes or no question but there are more details and more subjects in the second model. The two models are valid ones and could be use simultaneously in order to compare the two outcomes and thus be sure of the strategy to follow.
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The aim of this comment is to compare two models: Daizadeh et Al’s model (model 1) and Jorda’s model (model 2). Both models are used to determine whether it’s more appropriate to patent an innovation or to keep it secret with a trade secret.
First of all, there is a difference between the evaluations methods of the two models. In model 1, questions are only answered by “yes” or “no” whereas questions in model 2 are noted between 1 and 10 according to their likelihood. Model 1 is easy to use, understandable but maybe too radical. Indeed, this model is too simple and has a lack of nuances to be perfectly accurate. Model 2 is more precise, but grading something from 1 to 10 can be quite difficult, as you don’t exactly see the difference between each note.
Secondly, model 1 is a lot more direct and quick than model 2. Indeed, we can see that in model 1 one of the strategies (patent, trade secret, publishing the development) can be “forgotten” after only one question. In model 2, the result is only known at the end of the eleven questions. This model takes into account all the details and characteristics of the development that could have an impact on the result we would have had with other questions.
Thirdly, even if the two models present many differences, they also have similarities.
– Some questions are quite similar such as “Is the idea easy to reverse engineer or discover independently?” and “Can the nature of development be ascertained from commercial product (could the product be “reverse engineered”)?”
– The third question of model 2 is not mentioned in model 1 but I think that it can be compared to the sixth step of model 1.
– The first and fourth questions of model 2 are very similar to respectively the fifth and the third steps of model 1. It is the same for question 6 and 8 similar to step 2 and question 10 to step 1.
– The forth step of model 1 is not mentioned in model 2 whereas questions 2,5,7,9 and 11 from model 2 are not mentioned in model 1.
As a conclusion, we have observed that the models have differences and similarities, which is why I believe that they should be used complementarily. They are not deterministic and should be used carefully, but they give a really good idea of the best strategy to adopt to have an competitive advantage.
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The aim of this comment is to compare two models: Daizadeh & Al’s model (called first model) and Jorda’s model (called second model) which allow an innovator to decide whether to patent its innovation or to keep it a secret under a trade secret.
First of all, it is easy to note that defensive publication has not been taken into account by the second model. The later only allows an inventor to decide whether a patent or trade secret would be best for its “development”.
Secondly, as for other differing aspects of the two models, we can see that the first one is a lot more direct than the second one. Indeed, in the first model, one of the options of the innovator (patent, trade secret or publishing the development) can be pushed aside after only one question. In the second model, the result is only known at the very end. Indeed it takes into account some counterbalancing characteristics of the development that could question the results that we could have obtained through an other question. For an example of that, we can look at question 5 and 6 which are: “Is it likely one could design around the development?” and “can the nature of development be ascertained form commercial product (be reverse engineered)?”. Question 5 stipulates that if it is easy for imitators to go around a patent, then this patent looses its value and therefore the innovation should be kept secret instead of patented. But question 6 points out that you should also pay attention to the fact that if the development can be found by competitors by reverse engineering, even if the patent of the innovation could be avoided by competitors, it won’t be very useful either to get it protected by a trade secret.
Thirdly, here are some other additional discontinuities between the two models:
– The second model takes into account the fact that the type of development that we are considering may induce the choice of one or the other solution. For instance, the optimal choice for a product is more likely to patent it and for a process you might be better off by keeping it secret. However, this point is, in my opinion, to a certain extent, present in the question “is the idea easy to reverse engineer or discover independently? ». Indeed, a process is less likely to be reverse engineered than a product.
– The third question of the second model, which is “how much of a competitive disadvantage would it be if a competitor obtained exclusivity?”, is not mentioned in the first model. But we could argue that it could be associated to its 6th step. Indeed, if the aim of the innovator is to prevent the competitor from getting the exclusivity on the innovation, then it may be better to publish the innovation, preventing thanks to that the competitor from patenting it. This option permits to save the costs induced during the patenting process.
– Questions 2, 5, 7, 9 and 11 of the second model are not taken into account in the first model.
– The 4th step of the first model is not mentioned in the second one.
Next, while the second model is slightly more complete than the first one, I also picked out many similarities between the two models: Question 1 of the second model is similar to step 5 of the first one, as well as question 4 to the step 3 (yet they do no imply the same result in the two models), question 6 and 8 to step 2 and question 10 to step 1.
As a conclusion, we can see that the two models have similarities and differences. While I find the second model more useful, the first model also has a point, especially through its publishing alternative.
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The objective here is to compare two models of roadmaps proposed to decide how to protect an intellectual property through several questions. The choice of protection is between trade secret and patent.
Although we know this choice is a complex issue, these two authors proposed their model to help innovator to protect their IP.
For easier notation, let’s call Daizadeh & Al’s model M1, and Jorda’s model M2.
First of all, the main difference between these two models is located in their evaluation. In deed, in M1 the questions are answered through “yes” or “no”. As oppose to M2 where questions are answered through a ranking from 1 to 10.
M1’s evaluation is very simple, comprehensive and leads to a perfect understandable. The issues are: it lacks of accuracy and maybe seems too simple to be true, nothing is black or white, and there should be a middle phase.
As for M2’s evaluation, the ranking is a clever alternative to the “yes” or “no” version, allowing you to be more complete and accurate. However, answering a question by 1 to 10, is always quite confusing, explanation for EVERY number should be add (5: I don’t know)
Secondly, another noticeable dissimilarity is the number of questions.
M1 has 6 steps as oppose to M2, which has 11.
Clearly, 11 questions seem more specified and complete than 6. Moreover, the M2’s questions are deeper than M1. Threatening M1’s legitimacy.
The difference might come from the fact that M2 seems to have split general question from M1 into more specific questions
Furthermore, M1 seems to give directly an answer considering patenting or not in just 2 questions while M2 will make you go through all the questions, wasting time. M1 is a good model to give you a quick and straight answer while M2 will take consideration all details and then indicate you the way to protect your IP.
Regarding the similarities, both models provide an answer about IP.
Besides they raise occasionally the same questions.
About overlapping, we can find this effect concerning the public disclosure question. While M1 asks very simply if it is needed, M2 asks about the disclosure of unprotected information,
Besides, M1 and M2 patterns suggest patent protection if these following elements threaten the innovation: reverse engineered, discovered independently or subject of licensing.
Last but the not least, a difference can be found in the answers influenced by length-duration.
In deed, while M2 propose the trade secret approach for a short life span, M1 will strive for a patenting approach.
Concluding, the M1 and M2 roadmap should be use complementary due to their advantage and disadvantage.
Show lessCombining both models should provide a good, accurate and trustworthy answer.
Converting these two patterns into one would provide an excellent evaluation concerning the IP protection management.
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The question of protection of intellectual property ends up being incredibly important, since the right/wrong decision can make/break an idea, product, or in some cases even a business. Therefore, it ends up being important to have some sort of way to support these decisions, and that is where these models come into play.
While the decision to either go for a patent or to try keeping the secret is the object of both models, there are still some key differences.
However, instead of just comparing models in their sections, and what they take into consideration, I would like to focus my comment on what I believe to be the key issue, and effectively the most difficult question to answer in this whole process, which is: “How likely is it that someone spontaneously invents/develops what I just developed” (to make it clear, I mean as a coincidence, and absolutely not through reverse engineering). I believe this is the key issue, since it is much harder to estimate than other factors upon a certain invention. It is relatively easy to know in what industry the invention is in, or even what the degree of public exposure or reverse engineering possible. However, it is much harder to truly estimate if someone else is even “studying” the same thing as us, let alone reach the same conclusions. There is a fine line between a moment of brilliance and the logic conclusion to a systematic research, so how do both models take it into consideration?
While both models take this particular concern into consideration, there is a completely different way to approach it. The biggest difference being that while one model takes binary decisions in several steps to reach a conclusion, the other takes a sort of average between some key questions. Let’s take a look at the problems with both, taking into account this problem of uncertainty over just what the market might produce related to our invention:
I would first like to approach the Jorda model, that approaches this problem in a quite direct way. Indeed, question 8 asks “Is it likely that others will independently arrive at the same development?”. In a very comprehensive fashion, the questions allows you to score it from a 1 to 10, based on the perceived likelihood of someone finding exactly the same conclusion as us. Now, I don’t see much of a problem with perceived likelihood (since we can’t look into others’ labs, this is the best piece of data we can get). However, the fact that in the conclusion of the model, this question counts as any other presents, in my opinion, a limitation, since this can be THE key issue when going for a patent. The fact of the matter is that there might be some weighing left to be done with the score of each question, in order for the model to be better suited for each market. It doesn’t seem balanced that the final score will take every question equally, when some can be so much more important than others (obviously, which ones depend mostly on the industry that one is analysing).
In the Daizadeh model, this issue is not taken directly into consideration, with some similarities being found in 2 of its Yes or No questions. Indeed, this model chooses to give up our own perception on how likely it is for someone to reach the same conclusion, and chooses to ask the more generalist questions of “Technology changing rapidly?” and “New are of technology?”. Indeed, the biggest limitation of this model ends up being the absolute answer that you must have, since a feeling of uncertainty about one single question (if you feel that something has a 50/50 chance of happening, it affects the whole model). Indeed, if you make a breakthrough in an stagnant but established market (in the case of “no” to both questions), the model fails to take into account any possibility of someone arriving at the same conclusion as you.
In this point that I consider so important, both models might present limitations in certain situations, which leads me to a conclusion that could be applied to most models. In the end, these are models, and therefore simplifications of reality. Therefore, no absolute answer can be extracted. It is important to use more than one tool (models), in order to better ponder your decision. As well, it is important to see the limitations of each model, specially when applied to former cases inside the industry. How would decisive cases in the past would have acted if they followed the model? What can you take into consideration that they didn’t? How can you build upon the model by asking yourself more relevant questions, that can better suit your situation? These are questions that any inventor/entrepreneur should use to complement all the limited, but very valuable information that the models provide.
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Both the above mentioned approaches differ in a sense that Jordo’s approach take an exhaustive view of the whole picture and consider most of the variables in a single bucket, i.e., to come to a final decision, it is considering all the parameters that (as per Jordo) should be considered to make a decision. On the other hand, Daizadeh et. al’s approach takes a step by step approach which may overlook a few parameters in certain cases.
Show lessFor e.g. Daizadeh et. al’s approach doesn’t take care of the competitive advantage as Jordo’s approach does. Hence it won’t be able to consider the potential losses that one may run into had he/she not considered competitor’s move. It also has missed on the legal issues that may be related to the patenting.
Jordo’s approach seems to have segregated the whole concept of patenting under three heads – marketing, technical and legal. It has considered various aspects of these heads properly. Having considered them on a likert scale makes the final decision comprehensive. It also considers the different weightage assigned to different parameters in the approach.
However, Jordo’s approach may produce wrong results in a few cases and may waste time collecting data. For example, in case where public disclosure is mandatory Daizadeh et. al’s approach will give the final result in just 2 steps. However, Jordo’s will take 10 steps to get to the same, and at times it may even give the wrong results.
Hence, both the approaches can give good results and work better depending upon the situations they are applied in.
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Nowadays, firms face a problem regarding the choice of protecting inventions with a patent or a trade secret. Due to this dilemma, there are two proposed roadmaps (the framework proposed by Daizadeh et al. and the one advanced by Jorda) that have the objective to give pratical guides about how innovators should choose between patents or secrecy. I am going to compare (pointing their contradictions and similarities) the two frameworks that can help companies when choosing between patents or secret trades.
The roadmap suggested by Daizadeh et al. introduces a third way of protecting innovations: the defensive publication. Enterprises can apply this strategy by publishing inventions in technical or trade journals so that competitors won’t be able to patent any identical idea.
When comparing the two approaches, all of us can notice that the answers we must give in the Jorda’s framework are more complex (graded 1 to 10 against yes or no answers in the Daizadeh et al. roadmap).
We can assume that Jorda’s work was based on the previous roadmap proposed by Daizadeh et al. because it’s more recent. Futhermore, Jorda’s approach seems to be more real by the fact that in some situations it assumes the best strategy can be mixing secrets and patents.
Concluing, we can say that both of frameworks have the same goal which is helping companies with the protection of innovations. However, in my opinion, the roadmap proposed by Jorda in more closed to reality. To sum up, I think that, when choosing the way to protect innovations, both of frameworks should be used complementarily.
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The two models overlap each other because of the fact that both of them try to help companies to decide if it is better for them concerning a innovation to patent or trade-secrecy. The first one, the Daizadeh (2002) model is composed by six steps/questions and each question could be answered by yes or no. The second one, the Jorda (2007) model is composed of eleven questions and for each of them it is possible to give a score from one to ten.
Despite the fact they both are a guide for companies, they have some differencies.
The Daizadeh model doesn’t offer many nuanced, at the end of the path it’s patent, trade-secrecy or defensive publication…It’s black or white. In the Jorda model, at the end of the questions there is a grade from 10 to 110, which offer 100 grades of grey. It’s quite more nuanced. Moreover, in the Daizadeh model each step must be followed in a specific order, on the contrary in the Jorda model each questions could be answered firstly or at the end. The models are also different in their structure, in the first one there is six steps, in the second one there is eleven questions distributed in three categories (marketing, technical and legal). An other difference is that in the first model, there is three possibilities ( patent, trade-secrecy and defensive publication), in the second model there is two possibilities (patent or trade-secrecy) with a grey zone within the answer is not clear and may depend of differents factors.
However these differencies, there is also some common points. As I already said, the aim of the models but also some questions are quite the same, for example: “Is the idea easy to reverse engineer or discover independently?” and “Can the nature of development be ascertained from commercial product (could the product be “reverse engineered”)?”
From a critic point of view these two models are quite restrictive and simple which strenghens my idea about the complementarity of thes two models. Indeed, I thing it’s better to use two different theories to make an important choice like how protect our development. The Daizadeh model could be used if a company had a score included between 45 to 75 and help the company to choose one of the two solution proposed by Jorda or even guides the company towards the third solution (the defensive publication).
As a conclusion, I would say that the two model through their differencies and their similarities are quite complementary. Jorda has maybe improve the Daizadeh model in some aspects but he didn’t obsoleted. These models should not be used in a too predictory way because these models are quite un-specific.
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The main common thing between the two roadmaps are the fact that they are trying to help people to choose between patents or trade secrets. They offer different questions related to the kind of innovations and based on that, they guide you to choose the best option. But most of the time, especially for complex innovations, patents and trade secrets are mixed. As we can see in the text “Mixing patents and trade secrets for complex innovations” (Paul Belflamme, 2013), it is possible to patent each sub-innovation and to keep some of them secret, a lot of famous examples can prove it. To be patented, an innovation need to be of practical use and to show an element of novelty. The rules related to this are now softer so trade secrets can later become patentable.
First of all, in the roadmap of Daizadeh et al. (2002), innovators only have to answer the questions by “yes” or “no”. It can be an advantage as it is very simple to answer them and so you get quickly your answer. A disadvantage is that you only have a few questions what leads to less accuracy.
Secondly, in the roadmap of Jorda (2007), the questions are asked in a completely different way. When answering the questions, you have to choose between 1 to 10. So, at the end of the eleven questions, you get a total score and depending on this score, they advise you to choose patents or trade secrets. This approach is quite complete because you can measure the degree of your answer. It’s not just black or white as in Daizadeh’s model.
Now, if we want to compare both models, we can find some similarities as well as some differences. To begin with the similarities, the question 6 (Jorda’s model) and the step 2 (Daizadeh’s model) speak about the same subject: “Could the product be reverse engineered” and they give the same advice. We can also compare the question 1 with the step 5 and see that they address the same topic: “licensing”. They agree on the answer that if licensing seemed to be an option it would be better to patent it, but in the Jorda’s model, they give a nuance while giving some examples that succeed with trade secrets. Another difference is that the Daizadeh’s model mention defensive publication whereas Jorda’s model doesn’t.
To conclude, I would say that both roadmaps can be useful but that Jorda’s model is a bit more accurate. And also that the solution is not always to choose between both but maybe to mix them.
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Both the authors have presented their arguments on IP protection categories in a very interesting and simplified manner. The models given by Jorda and Daizadeh et. al are very different in their own right and complement each other well, overlapping in some regards.
At a very basic level, Daizadeh et. al.’s questionnaire seems very straightforward – 6 questions with binary responses which help you to choose the kind of IP protection you want. He seems to pick up on the most relevant characteristics of each category, for example, Easy to reverse engineer or not, public disclosure required or not. These binary decisions lead to elimination of options and consequently to the right choice. Apart from this, he also recognizes the real world situation of IP protection – by introducing a question which considers financial prudence as well by introducing a third option of a defensive publication and thereby preventing too high investments into what could be a NPV negative investment in patent costs.
Jorda’s questionnaire on the other hand, focuses on various areas of development,and is more comprehensive. It also includes questions which are more rounded, focusing on things that a decision maker will ponder on and gives relatively more leeway by allowing a grading on a 10 point scale. In some ways, it includes some questions which a decision maker should think about even while answering Daizedah et al’s questionnaire and thus seems a more comprehensive version. However, in terms of actual decisions, it has a grey area in between – scores in the middle of the range do not correspond to any definite solution. Also, it opts to look at some real world problems like how easy it is to prevent dissemination of information which would be prohibitive for a following a trade secret approach or how much protection would patents offer in terms of claims and their validity in court which if less, would obviously work against a ‘patenting’ approach. In this way, I feel that Jorda’s questionnaire seems to follow the real world more closely where it is not able to assign specific outcomes on the basis of some questions and you need to think of a much wider scope including competitor behaviors and reactions, something inherent to a multi-player, multi turn environment.
Overall, to sum up, I feel that both the models are simple and easy to follow and cover a lot of areas which one needs to think about while deciding the type of IP protection he/she wants. However, one can gain the most by adopting or at least considering both the models together in unison as both the models have certain nuances which the other one fails to incorporate.
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A straightforward difference between the two models is that the first one (proposed by Daizadeh et al) regards the possible answer to the question as dual. It can be either “yes” or “no”, it is not possible to have an intermediate position. This raises immediately some scepticism since on knows that the relality is far from being either white or black. Jorday, in his roadmap allows for more flexibility. For each question, the answer can be scaled from 1 to 10, depending on the location between two extreme situations.
The possible conclusions are different. The first model can lead to three different strategies, namely: secret, patent or publication. The second model ignores the defensive publication strategy but allow for a situation where it doesn’t really matter which approach is followed initially (when the total values is in the middle range 45–75).
In addition, in the first model, there is a path to follow, with the answer to one single question might provide to lead to a strategy (for example, as soon as “yes” is stated for the first question, following the model, there is no way that the path will lead to “trade secret”). For the second roadmap, it is not possible that the answer to a single question provide from attaining certain strategies. Indeed, the first threshold is at 45, and therefore, to go over this, the answer to several questions is needed. This seems more reasonable because it balanced the different aspects while the first model can over-emphasis a single aspect.
About the content of the questions, it seems that in the first model, step 1 and 2 correspond respectively to question 7 and 6 of the second model.
The step 6 of the first model can be considerate as integrating both question 2 and 9. Indeed, the question 2 refers to the comparative advantage of a patent and question 9 refers to the difficulty to get the patent includes the money value (cost) and not just the likelihood to have it.
For the step 7, at first sight, the question seemed to me irrelevant as this question seems as simple as asking directly the conclusion. However if we include in the reflection the likelihood to actually get the patent, then this question is in line with the question 9 in the second model. And this seems more pertinent, as I do not believe that someone not potentially interested in licensing the invention would care about this roadmap.
The evolution of the technology seems approached in two different manners. In the first model, the speed of evolution is in favor of trade secret as a the patent procedure could take too much time or it could be useless to hold a patent over a long period. However, in the second model, in question 4, a commercial development limited in the time is associated with patent. Here the emphasis is not on the technology itself anymore but rather on the commercial aspect.
A final personal note is that in the two roadmaps, the questions are extremely large. It seems that in order to be able to answer to those questions, en incredible large amount of information need to be taken into account.
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This week, I will compare two different roadmaps in order to find contradictions, similarities and complements. The main goal of those roadmaps is clear: « How to choose between one of the two strategies, patent or secrecy ? »
The first one is the Daizadeh’s roadmap which develop a 6-step approach while Jorda’s roadmap proposes 11 questions including a scale from 1 until 10 for each question.
First of all at the first sight, the 6-step procedure seems more basic and intuitive because we found less details than in the other roadmap. Moreover, the 11 questions are arrenged by categories (marketing, technical and legal), which seems more precise and « professional ».
Regarding the legal aspect, the Daizadeh’s roadmap doesn’t mention it. This theory has a big lack compared to the other because it’s an essential point if you want to choose between a patent or a secrecy.
Finally, I will say that the big difference between the two models is the structure which could be really important to « attract the eye ».
Show lessThe 6-step is more clear with the roadmap described by a graph. I think it’s just enough but well detailled. On the other side, the Jorda’s model is more like a survey which could be difficulter to read and understand.
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First of all, the two approaches try to explain why some firms choose to patent their innovation while others choose to hide it considering three aspects: economic/commercial, technological and legal. But there are differences between the importances accorded to each of them.
In the roadmap proposed by Daizadeh et al.(2002) the technological aspect is one of the most important , half of the steps are related to it . The economic/commercial and legal considerations seem being more relevant at the end of the decision process.
Unlike Daizadeh, in Jorda (2007) questionnaire the economic, technological and legal questions are equal represented.
Second, for Daizadeh et al.(2002) the beginning of the decision is related to the necessity of make the disclosure public but in Jorda (2007) the question is about the consequences of making disclosure public over unprotectable information.
Finally, Daizadeh et al.(2002) propose three options: trade secret, patent and defensive publication. The last one seems to be a choice that only a few inventors can take for instances technologist. Meanwhile, Jorda (2007) on the basis of the information gathered, it can be concluded that trade secrets and patents used side by side can have clear positive effects on the innovation sector.
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The frameworks proposed by Daizadeh et al. (2002) and Jorda (2007) are similar in a way that both can be used to help the decision making when managing the protection of the innovation process. I will compare both approaches by three different perspectives (also informally suggested by Jorda (2007)), being marketing, technical and legal views.
The marketing perspective relates to the way the new idea will get to the market. Both authors analyse whether the company is expecting to enter the “market of ideas”, where patenting is generally preferable, or to commercialise the invention, where patenting and secrecy are valid options depending on other variables. Jorda (2007) goes deeper into this topic and analyses the competitive advantage that is provided by licensing the idea and the disadvantage if the competitor does it in first place. I think this question is especially important because it relates to the value (economic and strategic) of the innovation itself for the company.
Looking through the technical perspective we found the most common points between the two articles. The importance of how the external environment is changing is mentioned in both approaches. A faster velocity in technical changes promotes a more licensing methodology, since it would ease workaround possibilities and potentially reduce the lifespan of the innovation. The degree of required public disclosing and the possibility of reverse engineering are also other topics of agreement and both positively reinforce a patenting option. These questions evaluate how easy it is for competitors to access the “exclusive” information subjacent to the innovation, and therefore keep secrecy.
Regarding to the legal view the authors present two different, but curious approaches to deal with the question. Jorda (2007) focuses especially in the economic point of view, how much is the cost of processing and litigating IP when related to the revenue of the innovation. Daizadeh et al. (2002) proposes a more traditional view and analyses the validity and enforceability of patenting but also the dissemination of information within the company, which relates directly to secrecy. At this stage, I personally consider both points of great importance and both must be taken in consideration for a complete logical decision. The legal environment is particularly interesting since this is where governments and courts have the tools to control and manage IP protection, either by changing the length and/or depth for the patenting process (as discussed here). A less rigid patenting system will encourage companies to opt for secrecy and vice-versa.
Concluding, my opinion is that a critical analysis to both articles, and subjacent models, give a broad view of decision making when it comes to protection of IP. It is difficult to cover all variables embodied in the process and both perspectives should be used complementarily. Although, it is important to remember that this type of papers should be used as a way to make more informed decisions and not a infeasible formula for managing. Good sense must be used when analysing the results
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The two roadmaps proposed in this text are both useful to choose between patent or secret to protect innovation.
The first difference between the two models is that the Daizadeh et al. (2002) model offers three different solutions to protect innovation. The first solution is to keep the innovation secret. The second solution is to do a patent to protect innovation. And finally, the third solution is to publish a defensive publication. In Jorda (2007) model, only the first two solutions are proposed. It’s important to say that none of the two roadmaps approach the subject of mixing solutions between the patent and the secret. In my opinion, this is one of the main disadvantages that can be find to these two roadmaps.
About the different questions, Jorda (2007) model appears to be more complete than the Daizadeth et al.(2002) . We may think that Jorda was inspired by the Daizadeh et al (2002) model to create its roadmap. The Daizadeh et al. model consists of 6 questions for which you can only answer yes or no. Jorda model consists of 11 questions. For each question, you can give a score between 1 and 10. Depending on the sum of all the scores, you get the optimal choice. Jorda model seems more accurate than daizebeth et al. model. However, when the score is between 45 and 75, it’s not possible to draw any conclusions with this model.
The type of questions between the two different roadmaps are also quite different. Again, the Jorda model seems more complete than the Daizadeh et al. model. Indeed, the questions asked in the Jorda model are more varied and covers wider topics.
In conclusion, I think that these two models are useful to choose how to protect an innovation. However, each of the two roadmaps are theoretical and generals models. I think we should be careful with these two models. I think the solutions may change depending on the type of innnovation, type of business, etc. Finally, I think the mixed strategy (between patent and secret) must be taken into account in these models.
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One traditional approach to compare both roadmaps Daizadeh et al. (2002) and Jorda (2007) is to see in which way they are similar in the type of question (Marketing, Legal and Technical). But this has been already covered in details by all my colleagues.
Another method is to measure the extent to which the different roadmaps favorise or simply take into account innovative SME or/and bigger companies and also if the model proposed corresponds more to traditional industries or new ones (high-tech market for example). If we take the point of view of a SME or even of a start-up, is the model helping to choose whether the enterprise is going to patent or not. And as a consequence which commercialization strategy will the enterprise lead on the market.
Concerning the Daizadeh et al.’s roadmap, most of the six questions concern SME as well as bigger companies, except the last step: “Do the potential market revenues outweigh the patent and associated costs?”. If we think about the losses to which start-ups and SME are confronted, the litigation costs against big companies seem impossible to bear in the patent’s case. On the contrary, the question nine of Jorda’s model does not affect money but considers only if a patent could be upheld by a court or not.
The question two in this model relating to the competitive advantage according to the exclusivity of companies is also quite oriented for big firms. Because it is much more difficult for a SME or a start-up to retain the exclusivity on a new market when other companies are entering in.
Finally, the last question of Jorda’s roadmap, “Would it be dificult to determine if competitors are using the same development?”, implies a good knowledge of the concurrence in the market. Which is not often the case encountered for little enterprise in a new market.
To resume the comments above, we can observe that on one hand the first model (Daizadeh et al.) is quite correct for all types of companies but stays general while the second model (Jorda) reflects more factors but sometimes too specifically. On the other hand, the first roadmap gives some importance to new market or new technologies whereas the second not.
To conclude, an enterprise should know its own characteristics and the implications of each roadmap before deciding which one conclusion (patent or trade secret) it will follow.
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How to choose a most effective way to protect an innovation.It is always a difficult question for all the innovators.Because the market value of innovation is hard to measure.Normally,there are two choices for innovators——patents and secrets.But Daizadeh et al.(2002) gave a different answers.The authors add defensive publication in their roadmap.Defensive publication is a intellectual property strategy for those innovators who do not want to pay the high costs of applying patent and keeping business secret.In contrast,Jorda(2007) proposes a new roadmap,just focus on two traditional choices.
There are many differences between two roadmaps.However,to some extent,they also have same content.The roadmap of Daizadeh et al(2002) include six steps and can be expressed as a following graph.In this roadmap, innovators just should choose “Yes” or “No”,then they can get the answer.It quite simpler than the roadmap of Jorda(2007).While the roadmap proposed by Karl F.Jorda is more like a questionnaire,it sets 11 questions and each question should be answered on a scale from 1 to 10.By summing the score of each question,the innovator can get a final value which would range from 11 to 110 and different range represents different advice.It seems more precise than Daizadeh et al(2002)’ model,because it use mathematical way to give advice.
As I mentioned above,the roadmap presented by Daizadeh et al.(2002) gives three strategies,but it just considers two parts——marketing and technical which are also included in Jorda’s roadmap,and Jorda adds the legal(question 9-11) part in his roadmap.Compare the content of two roadmaps,I find that questions 5-8 in Jorda’s questionnaire are same as questions 1-2 in the following graph of Daizadeh et al.That means that two roadmaps all pay attention to the “durability” of the new innovation.In other words,it is a important question in both roadmaps that the new innovation can be easily reverse engineer and discover independently or not.And in this question,Jorda’s roadmap seems too precise but inefficient.In addition,these two roadmaps have different focus.The following map of Daizadeth et al focus on the durability and technical content of the innovation.But Joorda more focuses on the market value and competitiveness of the innovation.
Furthermore,both of them are fundamentally flawed.The roadmap proposed by Daizadeth et al lacks legal part and compared with another roadmap,it seems less rigorous.But that does not mean that the roadmap of Jorda is perfect.Because it just considers two ways to protect the innovation,but sometimes defensive publication is the best choice for innovators.Moreover,although Jorda’s roadmap gives a large range from 11 to 110 but the middle range (45-75) does not has any meaning which means that when people get score in this range,there is no significant difference between patents and secrets.However in this situation,the innovator does not need to do this questionnaire,it just waste time.
In a word,it is hard to choose which one is the best roadmap for innovators,because these two roadmaps all have advantages and disadvantages.So I think it is better to do both of them in the same time and then compare two result to find a optimal choice.
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When we think about a patentable idea which is seeking patent protection and maintaining trade secrecy, we have to consider revenues and expenses of ours decision what we are going to do on the new idea. From the post, we have two roadmaps which would help us to find the best solation of choosing “Secrecy or Patents”. They are Daizadeh et al. (2002) and Jorda (2007).
Analyzing the roadmap of Daizadeh et al. (2002) firstly, there are six steps to guides us toward the answer. They are separated into three big parts, including public disclosure, reversion, and technology. But in this theoretical analysis, we cannot know anything about the weight of every steps. For instance, on step one “Public disclosure necessary?” ,we cannot know the real answer. It could be 100%, 70%, 50%, 30% yes. Therefore, the answer of each steps would appear system deviation and then we don’t find the real solution which we want.
Regarding Jorda (2007), it is a questionnaire which has 11 questions. It is also separated into three parts which are marketing (questions 1–4), technical (questions 5–8), and legal (questions 9–11). In this form, each questions have score from one to eleven. That means the total would from 11 to 110. If the total is over 75, we would consider trade-secret protection for ours decision. If the total is below 45, patent protection would be more suggested. But if the total is from 45 to 75, the decision depends on which industry we engage in.
When I compare this two proposed roadmaps, I prefer to complement them instead of contradiction. Back to our real-life, we always don’t consider a big project with one or two aspects. If I was administrator, I would use Daizadeh et al. (2002) firstly to have a main idea roughly. Secondly, finishing the questionnaire of Jorda (2007), I think after this two steps I have a more completive idea.
However, as I said, when we think about “Secrecy or Patents” , we have to compare revenues to expenses. Ever though you have a great solution of this issue, you cannot manage to a good profit. Everything you did would be useless. From the two roadmaps, they guide us toward the answer but the main problem is that we don’t consider the real data. If we add a new idea which is about data statistics. Linking the two roadmaps to the consequence of data statistics, it would really help for “Secrecy or Patents” issue.
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The two roadmaps proposed in this article have indeed some common features, but we can still find some differences.
First of all, they have questions that are nearly similar (about reverse engineering/the fact that it’s possible to discover the innovation independently/…) and some that are not formulated the same way, but aimed at the same answer ( “Is the technology area evolving quickly ? “ in Daizadeh et al. (2002)., and “Is it likely the commercial significance of the development would be limited in time ? ” in Jorda (2007) ).
There are also some questions that disappear between the 2 roadmaps (and some new ones in the latest one, about legal aspects), in particular this one : “Do the potential market revenues outweigh the patent and associated costs?”
It was the questions leading to a major difference, the fact that there are three outcomes possible in Daizadeh, and only two for Jorda (considering that the middle range results are not specifics enough, by saying you can choose both of the two others). If you choosed “no” for that question, the outcome was to not patent or keep the secret about your innovation, but to publish it in technical journals, which you cannot find 5 years later in Jorda’s roadmap. Maybe this can be explain by new legislations about patent and intellectual property.
Speaking about the outcomes possible, if you consider a 50% probability to choose yes or no in the first map, you have 40% to arrive on “Publish” and “Patent”, and 20% to “Trade Secret”. If you apply the same to the second one (by considering that every possible answer has the same probability), it’s 34% “Patent”, 35% “Trade Secret” and 31% “Doesn’t matter”. We can see that “Keeping the secret” have gain some importance in 5 years, probably for the same reasons than in previous paragraph.
Finally, it is explained in Jorda’s text that it comes from different author’s views, but there is also a big contradiction between these two maps. By choosing “Yes” for “Is the technology area evolving quickly ?”( Daizadeh et al. (2002).), you are told to choose the Secret alternative, which is in contradiction with “Is it likely the commercial significance of the development would be limited in time ?”( Jorda (2007)), which advise you to patent if you choose a number that correspond to a « Yes ». Same contradictions can be found elsewhere, but I am not going to expose all of them.
To conclude, the two maps have their pros and cons, but are only tools to help taking a decision. It’s my opinion that every case is different and you can’t just rely on a small roadmap to decide such important matters. But anyway, Jorda’s questionnaire seems better by taking in account more business categories (legal aspects,..), and saying that there are some cases where “it depends” of the innovation, sharing the same point of view that I have.
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Daizadeh et al. (2002) and Jorda (2007) have each proposed a roadmap to determine how to choose between trade secrecy and patents when dealing with protection of innovations. After having read this blog post, I would like to comment on these roadmaps and specifically look into whether the two roadmaps overlap, contradict and/or complement each other.
An important note is that Daizadeh and his co-authors proposed their roadmap seven years before Jorda suggested his, so it can be assumed that Jorda was familiar with their work and maybe even took some inspiration from them.
It is important to understand, as Jorda (2007) mentions in the start of his article, that trade secrets (that as the name suggests are kept secret from the public) and patents (that require full disclosure of the invention) are not necessarily opposing, but in many cases they can complement each other as patents would mainly protect new inventions whereas trade secrets are suitable to protect know-how. Mixing patents and secrets is especially common in the food industry (Belleflamme 2013).
The roadmaps are both supposed to be guides to how innovators should choose between the two main types of protection. Noteworthy, as mentioned in this blogpost, Daizedah and his co-authors include a third, more defensive strategy to use in the protection of innovations, namely publishing inventions in technical or trade journals. A so-called defensive publication makes sure that competitors cannot patent something similar to your innovation as you by the publication have made this knowledge available, and their potential patent would therefore not involve new knowledge anymore. The roadmap of Daizedah et al. thus consists of 6 yes-no questions that should help an innovator decide whether to patent, keep secret or publish the innovation. Jorda’s roadmap is built on the same idea, but made up of 11 questions. It also does not take into account the “publish”-solution, but focuses on the two main protection modes.
The two roadmaps clearly overlap in their aim, as they try to achieve the same thing: Helping innovators to choose between different modes of protection. They also include several similar questions that address the same issues. However, Jorda’s framework gives room for taking into account the degree of the issue by requiring respondents to grade their answer from 1-10, whereas Daizedah et al.’s roadmap requires yes or no-answers. I would argue that Jorda’s map hence makes it easier to apply the roadmap to reality, as this scale-function creates more nuanced answers. On the otherhand, a benefit with Daizedah and his co-authors’ framework is that after completing the six steps you will always arrive at a solution, whereas you with Jorda’s framework could risk ending up in the middle of the scale where there is no clear-cut answer to which mode of protection would be best for your particular innovation. Nevertheless, as reality is far from clear-cut, I do think that the Jorda model better reflects the real world. Sometimes, we might be dealing with an innovation that is not easily protectable by the conventional modes and then that should be discoverable in the model.
I would say that the two roadmaps could, and probably should, be used complementarily. As they both are based on academic research, performing two “tests” like these before deciding how to protect your innovation seems smarter than just addressing one roadmap. If you get the same result, you can be fairly sure you are going for the best strategy. Another good illustration of the complementarily of the two roadmaps would be e.g. imagining that you do the 11 questions in Jorda’s and end up in the middle, then you could turn to Daizedah and his co-authors and see what they propose you to do. Maybe you would discover that their third option of publishing could be relevant. Having commented on the overlap, contradiction and complementarily of the two models, I would conclusively add that being aware of the differences and similarities and using both roadmaps in a complementary way when looking into a innovation protection issue hence seems as the supreme way of dealing with the two roadmaps.
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First of all, I think that the choice between trade secrets and patents is not an absolut one: in most of the cases the optimum is to mix the two. In the same way, both the models that are analized in this article can be useful, as they answers different questions, so I reckon that in order to take a clear and effective decision they both have to be taken into account.
The very first thing that emerges when comparing the two differents approaches is the different grade of complexity in the answers the authors were proposing: I liked the very direct way in which Daizadeh et al. pose the questions, and the fact that they only require a simple yes/no answer: even without reading the full paper (which is unfortunately not available for free download), one can get a clear idea of what the author think is the best choice, case by case. Also, being able to summarize the theory in the graph dispayed above makes the understanding even more intuitive, and I’m convinced that simplicity, when combined with efficacy, is a remarkable asset. Last, but not least, I liked the “egg of Columbus” third-way idea of defensive publication, which constitutes an effective defense in some cases where patents or secrecy may not fit the problem.
On the other hand, Jorda gives a more in-depth approach, as he point out for every question asked all the aspects of the analysis, thus broadening his view on the field. Following the point of view of the author, it’s easy to notice how tecnological aspects of the subject are overshadowed, while he focus more on the legal aspects, i.e. patent protection
That said, the two roadmaps imply some similarities, and they also overlap on some aspects. For example, they give the same answers -to patent- when asked to determine what’s the best choice in “reverse engineering” and “discover independently” cases.
Show lessConversely, they also agree that not to adopt a patent is the best choice when facing reduced commercial impact (even if the two authors suggest differents strategies: defensive publication for Daizadeh et al., trade secret for Jorda).
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The 2 frameworks proposed by Daizadeh et al. and Jordo are extremely simplified ways for companies to think about protecting their innovations and development through either patents or as trade secrets. They both achieve similar end objectives of proposing patents for products which can easily be reverse-engineered and trade secrets for processes which are more difficult to be copied by the outside world. The frameworks however differ in their method of evaluation.
Daizadeh et al. looks primarily at the development from a technical perspective. The framework tries to understand how the technology would evolve over time and thus, decide the best way of protection. Jordo also considers this; however he does so from a competitor and commercial perspective. The financial advantages of maintaining exclusivity and the capability of competitors to arrive independently at the same product are analysed in order to make a decision. Jordo’s framework touches the legal aspects involved, however, only Daizadeh et al.’s framework measures this is in a concrete way by looking at the IP processing and litigation costs.
Daizadeh et al.’s framework is binary, whereas Jordo’s allows for a grey area, suggesting that a combination of both means of protection is appropriate. In today’s rapidly changing world, I believe it is not easy to accurately predict how technology or competition would evolve over time. Hence, it is more advantageous for companies to determine cost-benefits of both means and use them together in a complementary way at every stage to achieve maximum protection for their innovations.
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The Daizadeh et al. model is a path to follow which guides the firm towards the answer. This model doesn’t seem very nuanced. There exists three possibilities, patent, trade secret or defensive publication, depending on the answers yes or no. The other model, the Jorda model is composed with eleven questions which are organized by categories, marketing, technical and legal. This is not a path which tells the firm whether it should choose the patent or the trade secret : it is a total points and its score gives an indication about the answer. This model is more nuanced than the first one. Having a score between forty-five and seventy-five permits the firm to choose what it wants. That tells it that it won’t suffer from any prejudice whether it choose one strategy instead of another one.
Furthermore, the question “Public disclosure necessary?” has actually no weight in the path because when the firm answers “Yes” to “Easy to reverse?”, this cancels the “No” answer of the question “Public disclosure necessary?”. In Daizadeh et al. model, each question has the same weight. The firm can weigh itself as it wants the answers “Yes”, “No”, “Very Little”, “Likely”, “Unlikely”, “Very Great” and so on.
Nevertheless, some points in the two models are similar. For example, the question of the Jorda model “Is the development likely to be a commercial product or the subject of licensing?” is the same as “Are you potentially interested in licensing the invention?” in Daizadeh et al. model. Then, there are the questions “Can the nature of development be ascertained from commercial product (could the product be “reverse engineered”)?” and “Is it likely others will independently arrive at the same development?” are gathered in the question: “Is the idea easy to reverse engineer or discover independently?” in Daizadeh et al. model.
Also, some questions are in one model but not in another. For instance, the Daizadeh et al. model asks whether the technology area evolves quickly or whether it is a new area of technology. The Jorda model asks different questions about the technological aspect, but it doesn’t take into account the revenue point of view, on the contrary of the other model. Nonetheless, it asks questions about the legal aspect, which the other model doesn’t tackle. Other dimensions are in Jorda model which are not in Daizadeh et al. model like the competitive advantage and the exclusivity, the limits in time and the development of alternatives.
The answers as well as the questions can also be sometimes different. For example, in the model composed by different paths, when the firm answers “Yes” to the question about “reverse engineer”, the result can be to choose the patent or the defensive publication depending on the answer about the revenue. This is similar to the Jorda model. But, when the firms answers “No”, the final result is not always the trade secret as in the Jorda model. It is the case only when the technology is changing rapidly and if not, the area of technology must not be new and there must not be any licensing opportunity. Actually, when the firms answers “No” to the question about “reverse engineer”, the result (a patent or a trade secret) can be the opposite from the Jorda model result, which would favor the trade secret solution. This is the case when, in the Daizadeh et al. model, the technology is changing rapidly, when the area of technology is new or when there is an opportunity to licensing.
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In this comment I am going to compare two roadmaps which help innovative enterprises to face the question of choosing between patent and trade secrecy. I will first shortly describe the content of the roadmaps, after what I will compare the two roadmaps in order to see to which extent they overlap, contradict or complement each other.
Daizadeh et al. (2002) propose a six steps procedure to choose the strategy to adopt and Jorda (2007) proposes a questionnaire of eleven questions, which are answered on a scale from one to eleven.
To which extend do the roadmaps overlap?
Both roadmaps have the same objective: helping innovators to choose between patent and secrecy through a list of practical questions.
Almost half of both questionnaires address the same aspects: licensing opportunities (step 5 and question 1), reverse engineering (step 2 and question 6) and technological aspects (step 3 and question 4). Moreover, both roadmaps agree on the issue of the questions on these aspects.
To which extend do the roadmaps contradict each other?
In my view, there are 2 substantial contraditions: the interdependence within the questions in the questionnaire and the attitude to adopt when the innovation is easy to reverse engineer. Indeed, according to Daizadeh et al. (2002), if the innovation idea is easy to reverse engineer in step 2, the proposed answer is clearly to patent. Although the scale for question six is designed to propose the patent protection as an advantageous solution in Jorda (2007), nothing indicates that the total score would reach the same conclusion.
Secondly, in Daizadeh et al. (2002) the use of the 6 steps approach requires to strictly follow the step order and answer restrictively yes or no. If one step is missing, we cannot carry the argument to the end. On the opposite, there is no predefined order in Jorda (2007) and the answers are independent of each other and can be nuanced due to the utilization of a scale instead of a yes/no answer. Likewise, we can see a divergence on the final solution: when you respect the order and answer of all questions, you are certain to have a final solution with the Daizadeh et al. (2002) roadmap, when this is not the case with the Jorda (2007) roadmap where you can have a total score between 45 and 75 and thus no defined final solution.
To which extend are the roadmaps complementary?
By comparing them, I discovered that the two roadmaps have a lot of complementarities: the final choices, the different aspects taken into account and the utilization of the words to talk about innovations.
Show lessFirstly, while Jorda (2007) proposes two response scenarios: patenting or keeping the secret, Daizadeh et al. (2002) proposes a third alternative as a final step of the procedure, which consist in a defensive publishing of the innovative idea in a technical journal. This publishing gives a prior act to innovators and can be considered as a complement of patenting or keeping the secret.
As far as the different aspects taken into account are concerned, Jorda (2007) adds a legal aspect in the questionnaire with the questions 9 to 11. This is an important aspect given that if firms can’t defend their interests by suing firms with patent infringement, they won’t choose to patent their ideas and will instead prefer to keep them secret. This is thus a crucial factor in the decision of patenting or keeping the secret.
Finally, Jorda (2007) takes into account a larger variety of innovations than Daizadeh et al. (2002) by replacing the word innovation by development.
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Firstly, I would say that I am a bit septic. These charts seem to be very helpful in a theoretical context. I guess that with all the factors that influence the economy, it is surely hard to predict anything through a path of questions. That was my first feeling when I discovered the charts.
But let’s consider a simplified situation, I think that the chart of Jorda, because of a bigger number of steps, is more complete. More than the number of question, we also see some considerations about legal aspects that we don’t find in Daizadeh’s chart. This point has been noticed several time already but it seems to me that it is essential to the process of decision. The scale is also more precise with an interval between 1 and 10. At the end of this chart, we have build a path that fits more to reality than in Daizadeh’s one.
I see Daizadeh’s work more like a tool to provide an orientation. I mean by that that the 6 steps can only give a very vague suggestion of what to do. On the other hand, it is really interesting to have a third solution: the defensive publication. This is a very strategic option, a tough one I think because of the need to have a extremely clear view on the concerned market. And the binary choices simplifies again the situation.
Jorda’s chart appears to be more accurate and adapted to the reality that an innovator could face but it also requires to have a good overview on the different aspects (marketing, technical and legal aspects). Daizadeh’s one leads to a more basic characterization of the situation but at the same the same time, I feel like it can fit to a larger number of situation. Smartness is still required in this case (of course) but I suspect that there is a question of having a certain sense for business then…
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To start with, both Daizadeh et al. 2002 and Jorda 2007 present ways/roadmaps how to manage the protection of innovation. But, while Jorda 2007 compares the two options of patents and trade secrets, concluding that in many cases the two should go together rather than using only one of them, Daizadeh et al. (2002) adds a third option i.e. defensive publication. A defensive publication is suggested in case something can not be kept secret and at the same time the potential revenue due to protection with a patent is lower than the actual costs associated with patenting.
Daizadeh et al. (2002) present a model that is composed of six steps, polar questions to be answered either with yes or no, in order to decide if a protection should be patented or kept with a trade secret. In this respect, Jorda (2007) better accounts for the high degree of uncertainty inherent in issues regarding this latter decisions, as he proposes 11 questions to be answered on a scale ranging from 1-10.
Content wise and starting with similarities, both authors cover the question if intentions to license the development exist, suggesting that in this case a patent is most appropriate for protection. At the same time, the issue of how easy an innovation may be copied by others is relevant in both articles. Here, for example the term reverse engineering, meaning the process of extracting information out of a product like functionality, process of production, etc. is tackled. Both authors advice that if a product can be easily understood and developed by others, a patent should be used to protect it. In some aspects the models could complement each other. For example, while Daizadeh et al. (2002) explicitly includes the financial aspect in their model, leading to the idea of defensive publications, this path is not presented by Jorda (2007). At the same time, I believe Jorda (2007) makes a very valid point including legal issues and associated issues of dissemination of ideas or the likelihood to determine infringement.
Last but not least, I do not feel a real contradiction of the two models. While Jorda (2007) tackles more strategic issues like regarding competitive advantage, Daizadeh et al. (2002) focuse more on technical issues. Both are in my opinion valid and relevant points. It may be true that the model of Daizadeh et al. (2002) is more simplified than the one of Jorda (2007), but at the same time they include the option of defensive publication, which I regard as a very valuable extension. In conclusion, in the situation of an innovator, I would take the time to assess my innovation with both models, as I see them not very contradictory and useful to have a broader perspective on this important decision under consideration.
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The two frameworks have some overlapping aspects such as the fact that they consider whether or not it is possible to reverse engineer the product, the fact that they consider licensing, the potential of independent discovery,… Some aspects, however, are only covered by the method of Jorda (2007). Examples of these are the likelihood to discover if the competitors are using the innovation, the limitation in time of the patent,… The aspects covered in the model of Daizadeh et al. (2002) are, in my opinion at least, mostly covered in the more recent model form Jorda (2007).
The largest contradiction, in my opinion, lies in the different set-up of the models. The Jorda (2007) model uses a point system, in which none of the questions can irreversibly change the decision all by itself. The questions count for a maximum of 10 point on a total of 110. A completely different case is observed in the Daizadeh (2002) model where 1 question can completely rule out the potential for protection by trade secret. When we translate this to Jorda (2007) ‘s model, we can say that the first two questions have an enormous weight. In Jorda (2007)’s model all questions have the same weight.
I believe that the complementarity of the systems lies in the contradiction that was described in the paragraph above. In my opinion is the Daizadeh (2002) model a bit to black-and-white. Answering 1 question can completely change the outcome. An example where this approach may lead to wrong decision is probably the most famous trade secret in the world: even though it is not that hard to discover the exact composition of Coca-Cola, it is still claimed that no-one can do it. If Coca-Cola had patented the formula, it would already be expired for many years. Obviously the publication of the formula would decrease the attractivity and mystique of Coca-Cola. The Jorda (2007) model is not flawless either as in some cases 1 aspect can be so important that it should influence the final result. I therefore believe that a more qualitative approached should be used in which both of the frameworks can be used to guide your way or to raise any potential red flags.
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In oder to help innovators to make choices between secrecy and patents, Daizadeh et al. (2002) and Karl F. Jorda(2007) proposed their own roadmaps .
Following Daizadeh et al.’s guidance ,the innovators have to complete 6 questions with just “Yes” or “No”. This measurement can be also expressed by a flow graph ,which is much easier and more directly for innovators to make choices.While the questionnaire designed by Karl F. Jorda sets 11 questions to let the innovators give answers on a scale from 1 to 10. By summing each scores,innovators can get the ultimate value. According to the different categories range from 11 to 110,they can easily find the correlative choice. It seems much more accurate and rigorous when take the means of numbers into account.
In addition,the roadmap proposed by Daizadeh et al. is focus on two parts, marketing (Q:5–6)and technical(Q:1–4) ,but lacked the legal part(Q:9–11) which is also covered by Karl F. Jorda’s roadmap. To be specific, on the one hand,the questions 5—8 in Karl F. Jorda’s roadmap are totally the same as Daizadeh et al.’s questions 1—2. From the viewpoint of technological aspect , Karl F. Jorda didn’t take the effectiveness of technology in a given time period and the discovery of technology in new areas into consideration. When we refer to the marketing area, Karl F. Jorda focused more attention on pros and cons due to the competition, through quantization,than Daizadeh et al. did . Besides, “whether the commercial significance of the development would be limited in time “,which is a very important reference in my opinion,doesn’t point out in Daizadeh et al.’s roadmap.On the other hand, Karl F. Jorda’s roadmap is a huge advance on legal aspect as its a vital factor in discriminate between patent and trade-secret.
What’s more,when we just analyze the outcome of both of the roadmaps ,it is easy to find Daizadeh et al.’s roadmap has the third choice—defensive publication,doesn’t concluded from Karl F. Jorda’ s one. Furthermore, innovators can get a unique solution finally followed Daizadeh et al.’s roadmap.On the contrary,it is not hard to get a score in the middle range(45–75),which means it doesn’t really matter which approach is flowed initially. If in this case,innovators will get an ambiguous answer and I think it may make no sense to do this questionnaire.
All in all, in my opinion, it is really a hard question to say which one is much better,however,because both of these roadmaps have disadvantages and advantages separately and can relatively complemented, it’s better for innovators or innovative firms to use these two evaluated methodology at the same time to get the ultimate solution.
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The evaluation methodologies developed by both authors, Daizadeh et al. and Jorda, are interesting ways of analysing one’s invention or development to determine whether one needs to protect his development or idea by means of a patent or by means of a trade secret.
Though the questions are different in the two roadmaps, their underlying objective or motivation is quite similar. The bottom line in both the roadmaps is that if one’s development or invention is capable of providing competitive advantage, and is a new technical or technological innovation that has not yet been discovered by competitors, but is capable of being discovered by competitors either independently or by reverse engineering in a short period of time, then it is better to go in for a patent, as it would provide a legal protection to one’s development, that would ensure that all commercial benefits flow to the patent owner, and would discourage competitors from trying to duplicate the development.
Though the end goal or objective of both the roadmaps is quite similar, they approach the objective from different angles and are structured differently. Daizadeh’s model concentrates more on the technical aspects of the invention or development and aims to give a definite yes or no answer to the evaluator. On the other hand, Jorda’s model delves deep into the commercial aspects of the development, and seeks to provide an answer that would be more in sync with what the entrepreneur or business manager in charge of the development would be concerned about.
Daizadeh’s model also contains an extremely important nuance which is not present in Jorda’s framework. End of the day, going in for a patent, irrespective of the fact that it may be more advantageous than a trade secret, must make sense from a financial or economic point of view. Daizadeh’s model captures this and states that if the patent related costs are higher than the potential benefits derived from the patent, then it makes more sense to publish the invention in technical or trade journals, thereby making the invention a part of public domain, and preventing a patent from being issued to the competitors for the same development.
Thus, to sum up, in my opinion, both models work towards the same objective or goal, but take different approaches, and hence, it would make a lot of sense for the inventor or the entrepreneur to use both models at the same time, as it would give him a comprehensive and broad framework covering both technical as well as the commercial angles, within which he can evaluate the best solution out of the various options available to him.
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First, Daizadeh et al.’s roadmap is a list of yes or no six questions who lead to secrecy, patent or publication protection. Jorda’s one is a list of eleven questions whose answers are graded on a scale from one to ten and then the total score determines if you should choose secrecy or patent protection. A total score of 75 and above leads to trade-secret protection whereas a score of 45 and below leads to patent protection. Jorda also says that with a middle score of 45-75 the choice between secrecy and patent doesn’t really matter.
Second, questions on Jorda’s roadmap are explained by a comment below the questionnaire in order to facilitate understanding and to be accurate when grading the answers. It is something that is not present in Daizadeh et al.’s roadmap.
We can also see that Daizadeh et al. mainly focus on technical questions. Questions are more general and lead directly to the final answer. That is not the case with Jorda. His roadmap focuses on three domains such as marketing, technical and legal questions. This roadmap is then more detailed and complete.
There is still a resemblance and a complement between those two roadmaps on technical questions. Indeed those two ask on subjects such as « public disclosure », « reverse engineered », « independently discovering ».
To sum up, Daizadeh et al.’s roadmap is easier and gives a general overview of what should be selected (secrecy or patent) while Jorda’s roadmap is more detailed and accurate.
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Both Daizadeh et al. (2002) and Jorda (2007) roadmaps are tools to analyse whether an innovation should be diffused publicly or kept secret. In the 2002 model, Daizadeh et al. propose 3 different options: issue a patent, keep the invention a trade secret or rely on defensive publication. The last one is particular to this roadmap and can be interesting when a company is afraid that the competition can bypass the patent or claim the intellectual property of the innovation. Jorda’s 2007 roadmap on the contrary only proposes 2 different possibilities, namely trade-secret protection or patenting.
Even though both roadmaps treat the same subject, they are quite different. First of all, the Daizadeh’s roadmap is composed of 6 questions where you can respond either yes or no to each of them. Depending on your answer, the model proposes the preferred outcome. Jorda’s roadmap on its turn, is composed of 11 questions. You can choose to give a score between 1 and 10 to each question and in the end you should sum up your total points. If the sum is above 75, trade-secret protection is the best option, if the score is below 45, patent protection suits best. If you have a middle range score (from 45 to 75) the author says it does not really matter which technique you use. I personally think this last part a bit vague and maybe an easy conclusion for middle range scores.
Another difference is the scope of the questions. The first model only has 6 questions so it is normal to say that the 11-question questionnaire is more complete. Additionally, when we look at the sort of questions asked, the Jorda roadmap focuses on marketing, legal and technical ones whereas the other roadmap has its orientation primarily on technical questions.
As a matter of conclusion, we can say that the Jorda roadmap is more complete and specific whereas the Daizadeh et al. model only offers 6 questions with a limited answering possibility (yes or no). But, we do not have to exclude the importance of the latter depending on the company and the situation. Maybe this model is more adapted in some cases. Furthermore, Jorda’s roadmap has been created in 2007 whereas the other one in 2002 so we can assume that the author has inspired himself from the oldest model and has tried to improve it.
As a last reminder, I would like to state that both patents and trade secrets are equally important depending on the company, the sector, the evolving environment, laws, etc. Jorda (2007) said “using patent and trade-secret protection together in a synergistic manner results in a potent exclusivity” to illustrate these words accordingly.
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Before examining to which extent both roadmaps overlap, contradict or complement each other, let us begin by pointing the differences between these two roadmaps.
The biggest difference that we noticed by looking at the two roadmaps is the existence of a third conclusion in the Daizadeh’s roadmaps. In fact in addition to “trade secret” and “patent” , the Daizadeh’s roadmap propose a last solution which is “defensive publication” in technical or trade journals.
Another difference is the difference of scale between the two roadmaps. Daizadeh’s roadmap’s only asks for a “yes” or “no” for each question whereas the Jorda’s roadmap has a scale from 1 to 10 for each question. It makes the Jorda’s roadmap more nuanced than Daizadeh’s one.
The questions both roadmaps cover are the possibility of reverse engineering and the opportunity of licensing. Concerning reverse engineering, both roadmaps recommend the patent as a solution if the product is easy to copy via reverse engineering. Both roadmaps also advise to patent the product if it could be the subject of licensing.
Jorda’s roadmap covers the legal aspect of the product’s protection which is not covered by Daizadeh’one. Daizadeh’s roadmap focuses on the marketing and technical aspects. On one side, Daizadeh’s roadmap allows to take less risk by sending us to one solution or another with one “yes” or one “no”, we are never hesitating between two possibilities, but on the other side, the lack of some more questions about financial and legal aspects makes it less precise. On the contrary, Jorda’s roadmap is more precise by covering all the aspects with his questions but there can always be uncertainty at the end by obtaining a score between 45 and 75 which makes it more risky to follow.
Given that we are living in a nuanced reality and that choices in life are not based on binary informations, I would say that Jorda’s roadmap is more realistic than Daizeh’s roadmap and I would rather follow this roadmap.
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How to choose between secrecy of patent in order to protect the innovation ?
Show lessSeveral authors tried in the past to answer this question to using roadmaps. What we can immediately notice as differences between the both roadmaps is first the year in which they have been published and also the form that they have been given. Indeed, the oldest roadmap is the one published by Daizadeh and al in 2002. We may ask ourselves if it’s not too old to take into account , should it be revised ? Innovative development has been improved and technological innovations may not be protected as the same way as they were twelve years ago.The Jorda’s roadmap dates from 2007 , which is more recent and perhaps more pertinent.
In the form, they differ as one employs binary answers ( Jorda’s) whilst the second one uses more detailed answers as they used scales going from 0 to 10.
Since Jorda’s questionnaire is more accurate and includes eleven questions rather than six, we can think that it takes into account more types of innovation : robotic, recipe, new technologies and so on than Daizadeh does. That’s why, in my opinion, Jorda’s roadmap might better suit to today’s innovations.
The both questionnaires are similar in some respects. For instance, both wonders if the innovation is easy to reverse or to counteract – « Is the idea easy to reverse engineer or discover independently? Yes? –> Patent , Daizadeh 2002 » / « Is it likely others will independently arrive at the same development? », « Is it likely one could develop alternatives », Jorda’s 2007.
In Daizadeh’s roadmap, the answer cannot be discussed, if the idea can be reversed then one needs a patent. While in Jorda’s roadmap, it’s more precised. They are two questions instead of only one, can the competitors arrive at the same development or can they find alternatives ? The answers to those questions differ. If for the first question patent is granted , in the constrat, for the second question trade secrecy might be a better solution : « the relative value of the trade-secret option is higher (because of the decreased value of patent protection) ». Once again, Jorda’s answers are more accurate and takes into account more factors related to the innovation.
A second example of the lack of precision from Daizadeh and al is seen around the question « Is the technology area evolving quickly? Yes? –> Secret ». They highly recommand a trade secrecy provided that the technology improves quickly. While Jorda’s answer distinguishes between short and long commercial life. For a short commercial life, a patent is prefered whilst for a longer life the trade secrecy is the best option ( refer to Q4 Jorda).
In general, I would say that Jorda’s roadmap completes Daizadeh and al’s. I would recommend innovative firms to look at the two questionnaires and balance each response. Daizadeh and al might seem clearer and more direct whereas Jorda completes by adding questions such as Question 9 or Question 11 which are not reproduced in the 2002’s roadmap for instance.
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The two suggested models to choose between a patent-protection and a secret-protection have some common characteristics, but are still very different.
First of all, the model of Daizadeh et al. (2002) offers a third possibility, the “defensive publication”, to protect the innovation while Jorda’s model (2007) just considers two options. It implies that the first one is maybe more adapted in the sense that more possibilities allows the best protection system for an innovation. However, this first model is based on a yes-or-no questionnaire of 6 steps, while the second one is based on a 1-to-10 scale for 11 questions. The yes-or-no implies that there are fewer nuances, as nothing is completely black or white. The 1-to-10 scale is therefore more precise and allows you to be more nuanced in the answers. The choice has thus to be made between a shorter yes-or-no questionnaire with more end-possibilities or a longer 1-to-10 scale questionnaire with fewer end-possibilities.
Second, the best protection in Jodra’s model (2007) comes out of a total score (between 1 and 110), with a large “no man’s land” while the Daizadeh et al. model gives a precise answer. However, this model does not take into account the marketing and the legal aspects of the innovation, which the Jorda’s model takes into account.
To conclude, I could not say which model is the best, as everybody has its own preferences. The nature of the innovation also has a role to play in the choice of the model. Both have advantages and disadvantages. Mixing the two models to build a third one could be more complicated than expected as they are based on very different methods. A solution could be to do the exercise on both models and to take a decision after the two outcomes.
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Today firms can choose among multiples solutions in order to secure and maximize revenue from their intellectual assets. In this comment , I will focus on two of them : patent and secrecy. I will try to resume and compare the two roadmaps presented above (Daizadeh et al (2002)and Jorda (2007)).
Show lessBefore going into details I would like to point out three methodological differences between those two roadmaps.
First the Daizadeh roadmap is based on binary choices while, Jorda offer a wider choice of answers. Indeed, each question can be answered by a number which scale your approval or disapproval to certain sentences (Ex: 10 = very likely and 0 = very unlikely). At the end, you have to compute the sum of the numbers associated with each of your answers. A very low result means that you should patent your development (= any sort of innovations or inventions) while a high one advise you to rely on secrecy. Second, the Jorda framework is more elaborate because it relies on nearly twice more questions (11 agains 6 in the Daizadeh framework). Third, the Daizadeh roadmap can, under some circumstances, lead you to a third result : the publication of your development in technical or trade journals. Here the goal is no longer to keep something for yourself but rather prevent others to do so.
Now let’s turn to the content and the recommendations of both roadmaps.
The two roadmaps stresses conjointly the strong need for patenting your development if you intend to license it or if it can be easily imitated convincingly by competitors (reverse engineering). Both also support patenting if you are unable to hide your development. This can be the case because of the need for public disclosure (Daizadeh) or because too many people from your organization will have access to the details of your development making leaks unavoidable (Jorda).
So far we linked three points of the Daizadeh roadmap with three points of its Jorda counterpart. The others points of those two papers are much more difficult to compare. Indeed, they do not contradict or get along with each other, they rather focus on different questions.
The Daizadeh paper raise technologic questions about the development that would be patented or kept secret : is it a new area of technology or is it a rapidly changing technology area?
On the contrary The Jorda paper adopt a strategic point of view. How useful is it for us to make sure that we are the only one to use it? And for how long? How bad would it be if someone else secure this development for himself? If we choose to patent our development, can we enforce easily our exclusivity? Would it be fruitful to pursue a competitor who is copying illegally our development?
In conclusion, I would say that those two roadmaps are highly complementary. Indeed, they do not contradict each other. Furthermore, each of them focus on different elements : technologic (Dazaideh) or strategic (Jorda). It would be interesting to convert the binary answer of Dazaideh in “scale”answer such as those used in Jorda and then collapse those two different roadmaps in a comprehensive one.
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Patent or secret? It’s a controversial question that both roadmap, “Jorda’s” and “Daizadeh and Al’s”, are trying to clarify. The Daizadeh and Al’s roadmap is a sequence of 6 question with only binary answers (Yes/No) that lead to a unique and fixed action to be taken while Jorda’s roadmap present a statistic process in form of a questionnaire with 11 questions with a scale of 1 to 10 where each answers add some “weight” to different directions that is summed at the end.
First, after a quick comparison, there are some areas where both model do agree with each other like the common decision not to reveal the innovation product when it can easily “reverse engineering or discovered”.
Then, after a preciser analyze of these roadmaps, some differences appears. The biggest difference lies in the framework of questions. Jorda’s gives more weight on questions about the legal, marketing and technological aspect while Daizadeh and Al’s treats only the technological way. Moreover, Jorda’s method takes into account alternative development.
Hence, an important area that is only covered by Jorda’s is the competitive disadvantage that company would have by letting a competitor have exclusivity over the innovation. Jorda’s take into account another dimension: the control of the flux of information in case of a secret. Indeed, if the company works with a secret but the stream of information is too big, the secret will quickly discovered.
While Jorda’s roadmap is undecided for average results, Daizadeh and Al’s proposes a third process to protect the innovation when the potential market revenues outweigh the patent and associated costs.
As a conclusion, one can say that the major differences listed above make both methods complementary one to another. Indeed, the best way to choose is to consider the recommendations of both methods and then make a decision on which is the best approach. The key lies in the very nature of the innovation and mainly on the context in which it develops itself. However, both roadmaps fail to consider whether the invention would be highly beneficial for the society or not/ how beneficial the invention could be for the society (i.e medicine).
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First of all, as we can see on the Jorda’s chart : Trade Secret Evaluation Questionnaire, the questions seems to be more accurate than on the Daizadeh and all roadmap’s. As a matter of fact, the both schemes are treating the same subject : dealing between patenting or keeping trade secret.
As we can see on Daizadeh and others chart, the roadmap is established as a binary roadmap letting place to less opportunities than on Jorda’s questionnaire. Although Jorda’s chart is more accurate, approching two aspect of the Gans and Stern Model : the excludability environment and the complementary asset environment which allow us to analyze the competition situation more deeply on the market : illustrated by 4 generics situations : the attacker’s advantage, the reputation based ideas training, the greenfield competition, and the ideas factories. All of thoses situations could help any start-up dealing with the problem of lauching their invention and commercialize it theirself (the product market) or selling their invention to a partner that will commercialize it for, or with them. Daizadeh and others approach this point but Jorda’s doesn’t, limited by his binary system.
The approach of Daizadeh and Jorda have several common points, similitudes, but they differ in a crucial point, as Jorda prefers to be more concise, direct (binary system) and short, Daizadeh prefers the alternative of a wide scope leaving room for a multiple alternatives ( for example the situation whereas the score is between 45 – 75 ) : ” At times, values in the middle range (45–75) will result. Such a score suggests that it doesn’t really matter which approach is followed initially ”
Actually, a mix between patent and trade-secret is important in case of complex innovations : for examples the KFC, Coca-Cola recipe. “As illustrated by the previous examples, inventors of complex innovations face a rich set of strategies when it comes to protect their intellectual property. They may indeed choose between patenting and secrecy for each fragment of their innovation, which theoretically opens up a large number of combinations” But patenting is limited by two importants points :
1.” A strict enforcement of this utility requirement could prohibit the patenting of fragments of innovations.”
2.”A second requirement is that the invention show an element of novelty; that is, it must show some new characteristic that is not known in what is called the “prior art”, i.e., the body of existing knowledge in the technical field of the claimed invention. Hence, a strict interpretation of the novelty requirement could prevent inventors from patenting long held trade secrets.”
The point that I’m trying to make here, is to underline the accuracy of Jorda’s questionnaire on those 2 points quoted above. Jorda’s questionnaire is treating the deal between patenting and trade-secret keeping with an interesting point : why can’t we not let a trade-off situation ?
Both schemes cover a lot of common ground : legal issues, reverse engineering, licensing opportunity ectera. But why those two couldn’t be complementary ? According to the type of the product or the process, we can easily choose which model could suit it the better way possible, or even use both of them in complex situations.
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The first and most obvious observation is that the roadmap proposed by Diazadeh et al. is in the form of a flowchart, with only binary yes/no responses, while that proposed by Jorda is in the form of a questionnaire, with a scale from 1 to 10. Therefore, in Diazadeh’s roadmap, the answer to a single question could determine the course of action to be taken, while in Jorda’s roadmap, the answer to each question only adds some weight in one or the other direction.
That said, there are a couple of areas where the two roadmaps agree with each other. Both agree that an idea that can be easily reverse engineered, or discovered independently should be patented (more accurately, in Jorda’s roadmap, the likelier that this situation can occur, the lower the final score, and hence, the higher the chances of patent being the preferred outcome).
One area where the two contradict is in the case of rapidly evolving technology. Diazadeh et al. suggest that a trade secret is a better idea, while Jorda suggests that a patent is a better idea (question 4 – is the commercial significance limited in time). The most significant area of contradiction is in the choice of questions itself. Diazadeh et al. place higher weight on questions related to technology, while Jorda considers questions on technology, marketing and legal aspects as equally important and as substitutes to each other. Finally, Diazadeh et al. present the possibility of a defensive strategy of publication, while Jorda suggests that for middle scores, it may not matter whether the choice is a trade secret or a patent.
The major difference mentioned above also makes the two roadmaps complementary to each other. If, for example, a particular idea can potentially be reverse engineered easily, Diazadeh et al. recommends patenting. However, Jorda’s roadmap also considers the possibility that the patent might not be upheld by the court. In cases where this distinction is not quite clear, Diazadeh et al. provide a firm recommendation where Jorda may suggest indifference. On the other hand, Jorda also provides for significant marketing or legal concerns to over-rule, say, a possibility of reverse engineering. Thus, it may be better to consider the recommendations of both roadmaps, and make a judgement call on which is the better approach, rather than deciding it based on any one alone.
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The roadmap proposed by Dazadeh et al. is an effective tool to making decisions when the answer points more toward keeping the development a trade secret. That is, it works best when public disclosure is not necessary, the development is difficult to reengineer and technology is changing rapidly. However, it is when one or more of these conditions are not met that the decision becomes more tricky. Here is where the alternative method proposed by Jorda becomes more effective. First of all it takes into account not only the gains of patenting a development but also the potential losses that one faces should a competitor also arrive at the same development and patent it. Thus it weighs both the pros and cons of patenting an innovation. The commercial significance of a patented innovation may not hold long if the technology is evolving rapidly or the impact of the innovation is only limited. In such scenarios it is best to keep the innovation a trade secret rather than publicly disclose a patent. This feature is not captured by Daizadeh et al. Another important feature of Jorda’s method is the weightage assigned to each parameter instead of just yes/no answers. Thus, a scale can be developed based on which it is possible to judge mathematically whether patenting/trade secret or either can be followed. Finally, subtle questions which are frequently ignored like whether it is even possible to determine whether a competitor is currently using the development or an alternative to the development are also addressed by Jorda’s method. There appear to be no contradictions per se in the way the two frameworks have been developed. However, Jorda’s method appears more comprehensive.
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On studying both the frameworks for deciding whether to go for a patent or a trade secret, the following observations can be made:
Show less1. The fact that Jorda’s method uses a Likert like scale to measure the importance of each factor opens up the possibility of conducting very useful statistical analysis. For example, it would be possible to answer similar questions for developments which were kept secret or patented in the past and develop some sort of regression algorithm to determine whether a given development should be patented or not.
2. Jorda’s method adds an interesting dimension to the decision making process by bringing in the competitive disadvantage that one would have by letting another competitor have exclusivity over the development. This is a better evaluative method on this parameter as it combines two of the questions raised by Daizadeh et al. namely, the fact that it is easy to reverse engineer/discover independently and that it has a high revenue potential. Thus it would be possible to weigh the importance of both factors before making a decision on whether to patent or not.
3. One important aspect which Daizadeh et al. neglects in their framework is the legal aspect. This is brought forth very succinctly in Jorda’s method. If the patent’s validity is not going to be upheld in court, then it makes no sense whatsoever to hold a patent even though the cost of doing so may be minimal. In addition to this Jorda’s method also accounts for the degree of control that one has in ensuring that the secrecy of the development is maintained. This is also very crucial because even though a trade secret might be invaluable to a company, if the information flow cannot be controlled, then it won’t stay secret for long. In such a case it is always better to go for a patent to ensure protection.
4. Question 5 of Jorda’s method and Daizadeh’s question on technology changing rapidly both points to the fact that it is better to not patent a development when it is easy to develop alternatives. However, it may not always be the right choice in such a situation. It depends very much on whether the process of development of a product is in question or the product itself is in question.
5. Both methods fail to address another important aspect in this debate and that is whether the development is highly beneficial to society or not. If the development happens to be a very crucial drug or medical treatment, then without question it cannot be a trade secret. However, the innovator can be protected by intellectual property rights by filing for a patent.
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As a few have already pointed out, the road map proposed by Daizadeh et al. is clear, crisp and to the point. It basically is a set of questions requiring binary answers (yes or no) which on being provided would lead to a fixed solution (patent or trade secret or defensive publication). There is no grey area. On the other hand, Jorda’s approach provides an option of answering on a scale of 1 to 10 for 11 questions. The individual question scores are added together to yield a total score which is then used to decide a patent or a trade secret. The latter approach is indeed more flexible and additionally, it keeps the door open for situations in which a patent or trade secret would more or less yield the same result. However, there is still the question of whether all the questions are equally important to merit the same weights in the total score. For instance, the article itself mentions that the question 4 need not be considered in some cases. Clearly this means that this approach is highly subjective in nature and would vary a lot depending on the specific issue at hand. On the other hand, the first approach is completely objective in nature and quickly yields a solution when the answers to all posed questions are straightforward. Thus, we can say that the two approaches are in that way complementary in nature; switch between the approaches as the situation demands.
One other difference clearly is the mention of defensive publication by Daizadeh which basically comes into the picture when revenue potential is lesser than the IP processing and litigation cost. That angle has not been covered by Jorda.
Question 1 of Jorda’s approach is covered by Daizadeh et al. as well and both advocate the same remedy that is patents in case of licensing opportunity/ commercial product (barring the defensive publication option as discussed earlier). Jorda’s approach dives deeper into issues related to commercial significance, competitive advantages/disadvantages and competitor response as proved by questions 2, 3, 4 and 11. This has not been accorded similar importance in the former approach. Questions 6 and 8 have been taken into account by Daizadeh as well. However Jorda has additionally considered the possibility of developing alternatives (Question 5). Questions 9 and 10 about legal hurdles have been included by Jorda. This perspective is somewhat lacking in what Daizadeh et al. have proposed. On the other hand though, Daizadeh’s approach does consider the effects of technology changing rapidly or it being in a completely new direction. Last but not least, question 7 to me represents a significant aspect that has been overlooked by Daizadeh.
Since protection of innovation in most cases involves huge stakes, I would recommend stakeholders to review using both approaches. Or Jorda’s approach could be enough but I would then add in the consequences of evolving technology to the analysis as well. However, in case of a quick fix, Daizadeh’s approach would be the best.
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I would like to discuss a little bit more about defensive publication. This is a good alternative to patent and secrecy, especially for idea or concept which can’t be patented. Indeed, to patent an idea, there are some rules to respect. The Belgian Government says:
“To be protected by a patent, an invention must be novel, inventive (show inventive activity), have industrial applicability and be lawful.”
Unfortunately a lot of inventions don’t respect at least one of these criteria, so they can’t be patented. But authors would still like not to see competitors steal them their idea immediately after they discover it.
In Benelux, The Benelux Office for Intellectual Property (BOIP) decided to get around the problem by launching the i-DEPOT, “a legal means of proof that issues a date stamp for your idea or creation”.
Even if i-DEPOT doesn’t offer an Intellectual Property, it’s very useful for concept, model, prototype, etc. which can’t be patented. This is a proof, in case of conflict, that you have first this idea. The system is very well secured and nobody can access to your i-DEPOT. In this way, it gathers advantages from defensive publication and secrecy!
Secrecy it’s for me an option to use only in some case where you are sure (or almost, we are never sure not to be spying) nobody can’t discover it before you. Moreover, when you put your project on the market you are obliged to choose another form of protection. Secrecy is so a temporary and unsecured option. Despite that, this is often the chosen option because it’s free (you “just” need to be sure nobody can see you). I-DEPOT prevents you from spy when you decide to trade secret.
I think this way (i-DEPOT) should be much better known among SME or self-employed workers. This is easier than a patent at the beginning of their activities, very much cheaper, and you can renew the contract as time as you want.
It’s obvious that for big companies, for great new idea, etc. this is not a right alternative. But I’m sure there are at least as many SME/self-employed workers concerned about it as companies for which it’s unsuitable.
A great idea to develop so…
*http://economie.fgov.be/en/entreprises/Intellectual_property/Patents/Conditions_of_patentability/#.Ul6uWlDWPps
Show less*https://www.boip.int/wps/portal/site/ideas/what/!ut/p/b1/04_Sj9CPykssy0xPLMnMz0vMAfGjzOKdg5w8HZ0MHQ0szFwMDTxdLQLMg9193X2djYAKIpEVGPg6mRt4-jp6efv5-BlbWBoT0h-uH4WqBM0EH0MCCkBWgBUY4ACOBvp-Hvm5qfoFuREGmQHpigBUVAfV/dl4/d5/L0lDUmlTUSEhL3dHa0FKRnNBLzRKVXFDQSEhL2Vu/
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Daizadeh & All (2002) and Jorda (2007) both consider that the choice between the two options for IP protection, i.e., patent and trade secret, depends on the nature of the invention and the context.
The main difference lies in the decision-making process. While Daizadeh & All proposed a “Yes or No” questionnaire that sequentially guides the inventor towards an option, Jorda presented a questionnaire with several questions and a scale system (common to all aspects of the invention) such that the optimal choice is linked to the sum. As such, Jorda’s classification allows linear substitutions of an invention’s characteristics even if they are related to different functions (Marketing – Technical – Legal).
For me, Jorda’s questionnaire is less categorical and reflects more the fact that these two options are complementary to some extent and could co-exist in a hybrid strategy. His questionnaire is more detailed (particularly regarding patents associated costs) and gives more margin to the inventor.
Daizadeh & All considered a third option which is a defensive publication – when the public disclosure is necessary or the technology is easy to reverse engineer, and if the potential market revenues are lower than the patent and associated costs. Additionally, they look deeper into the technology area by taking into account its novelty in the decision process.
From my perspective, the two approaches are complementary in the sense that Daizadeh & All’s way is simple and radical; and Jorda’s is detailed and help determining the degree of several characteristics.
As the IP protection’s choice would have great consequences on how the invention would be managed and since the stakes could be high, the inventor should take the time to properly assess the different options, and consider both ways. On the one hand, going through Jorda’s questionnaire would allow him/her to identify which option is most likely suitable (in average). On the other hand, Daizadeh & All’s questionnaire would indicate what should be chosen with respect to a particular aspect of the invention – and more importantly what should not be done (even if the outcome of Jorda’s questionnaire favours it); it also offers another alternative which is to make the invention not patentable by competitors nor protectable as a trade secret.
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Following the order suggested, I will start by mentioning the common points between both frameworks, then I will analyze the conflicting ideas and, afterwards, conclude with the points on which they complement each other.
OVERLAP
I could notice mainly two consensual views shared by the works of Daizadeh et al. (2002) and Jorda (2007). They are:
– It is mentioned in both analyses that the facility of obtaining precious information by reversal engineering (even though the authors disagree on the relative importance of this fact, as it will be referred in the “contradicts section”) and the likelihood that the competitors have to reach the same invention are factors that should favor firms to a patent creation.
– Even though both works do not agree on the best strategy that firms should follow when the inventions are endowed by reduced commercial impact (Daizadeh et al. (2002) suggest the defensive publication, whereas Jorda (2007) the trade secret), they both state that the not adoption of a patent is a prudent measure.
CONTRADICT:
Several are the divergences existent between the publications. I can highlight the following:
– The most obvious difference relies on the fact that Daizadeh et al. (2002) suggest, besides the trade secret and patent, “defensive publication” as a possible strategic decision that firms can adopt.
– The roadmap proposed by Daizadeh et al. (2002) portrays the adoption of a patent as a strategy that should implemented under the majority of the circumstances, being quite special the situations on which trade secret should be perceived as the best response. Jorda (2007), however, adopts a more flexible approach, in the sense that several are the combination of scenarios (i.e. several are the combination of the answers for the form) on which the adoption of secrecy should be seen as optimal.
– Daizadeh et al. (2002) asserts that there should not be the possibility of choosing to not patent if the product is easily accessed by reversal engineering. The same conclusion is not verified by Jorda (2007).
– The work of Jorda (2007) explores more in depth the impact that actions of competitors can assume. Firstly, the author highlights the negative impact that can arise if a competitor decides to patent an invention that your firm was keeping as a trade secret. Secondly, when deciding about patenting, firms should take into account the possibility that competitors may have access of precious information disclosed by the inventor though two channels: either by a patent that does not preserve sufficiently their intellectual property (as addressed by question 5) or by lack of confidentiality further than beyond (mentioned in question 7).
– The influence that intensity of technological changes is seen as a driver of different nature by the authors: for Daizadeh et al. (2002) ephemeral technical mutations should bias firms to decide on trade secrets, whereas patents would be better chosen for Jorda (2007).
– Daizadeh et al. (2002) address to the technological stage of the industry as factor of decision making, something absent on the publication of Jorda (2007).
COMPLEMENT
Show lessRegarding the complementary between of both studies, two are the main points to be emphasized:
– Jorda (2007) presents a deeper and more complex framework related to legal issues involving patents, being considered three dimensions: it importance of well designed juridically; firm’s capability to control the flow of important information within the firm and, finally, the degree of enforceability of the patent. Daizadeh et al. (2002) offers a more generic view by summarizing the discussion of legal questions to what they refer as “litigation costs”.
– Both studies consider a myriad of elements to support the process of decision-making: while Jorda (2007) presents a more detailed approach, Daizadeh et al. (2002) opted to a more parsimonious framework.
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These two authors present in a different way how to choose between patent or trade secret.
Show lessThe roadmap proposed by Daizadeh et al. is enough easy and quick. It consists by response to questions by yes or no and find a clear response what to do, if it’s better to deposit a patent, publish it or keep secret. This 6-step approach is little detailed and contains basic questions.
On the other hand the roadmap proposed by Jorda contains 11 questions, each including a scale between 1 to 10. This model seems directly to be more detailed but in same time is more flexible, able to respond to more specific questions (in relation to marketing, technical or legal categories) in order to have a more precise answer. Anyway, results between 45 to 75 presents no difference which solution take patent or trade secret. This means that the chosen decision should not be wrong. However results in the middle are large enough and I don’t think that there is no consequence on the decision taken.
One difference in these models is the question about “technology time”, in his model Daizadeh recommend use secret in contrary to Jordan who focus rather on patent protection.
These two roadmaps imply some similarities. For example, question about “subject of licensing” and “discover independently” or question about “reverse engineer” which positive responses are in favor to a patent.
These two roadmaps are also complement and there is no better model to use. According me, each has advantages, Daizadeh benefit from his ease, speed and clear answer. About Jorda, his model takes into account a more detailed approach which is longer and more complex to analyze. Moreover, with Daizadeh each answer is important because has a strong influence on the decision, on the contrary to Jordan where responses have more flexibility and each answer has no direct impact on the final decision.
Certainly we can use these models together to have better view to be sure that our decision was confirmed by the two. Yet we can use one or other model separately. I think the choice between which model take depend on the characteristics of the products, invention,… In some cases Daizadeh roadmap’s is sufficient to take a decision and it’s not necessary to use Jorda’s roadmap. But in some cases, if invention is more complex and need to ask more complex questions, it’s safer use these two models together, and in some circumstances opt for a mix patent and secrety.
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First, in the Daizadeh et al’s roadmap, first step is about public disclosure only. No more words. What about the exclusivity and commercial aspect? What about competitors? Jorda’s roadmap takes into account these lasts questions (question 2 and 3) and goes further with question 7: will a public disclosure cause discovering of other information? In this case, Jorda completes the Daizadeh et al’s roadmap.
Then, in my opinion, both roadmaps overlap each other concerning legal side but Jorda’s roadmap goes further for this point. On the one side, Daizadeh et al advice to favor patent if the potential revenues are greater than IP processing and litigation cost (step 6). From another side, Jorda explains that this point is not negligible. He also takes in account the situation where a company is unwilling to sue a competitor for patent violation (litigation cost). But Jorda goes further in his study and he takes in account the dissemination of information within the company, because it should be a threat for the innovation. He also asks a question about detecting infringement (question 11). One more time, Jorda’s roadmap is more accurate and goes more deeply in legal problems a company meets.
In addition to this, in the Jorda’s roadmap, we find a question about the commercial life of a product (question 4). In my opinion, we can compare this question with the step 3 of the Daizadeh et al’s roadmap about technology changing. We can associate commercial life with technology changing.
In the jorda’s roadmap, there are some points of view. First, we read that some writers have suggested to favor a patenting approach for a development (or idea) with a short commercial life and a trade secret approach for a long life development. Although it is in my opinion logical (for instance smartphone industry with its patent war and its fast technology changing), Daizadeh et al’s give another conclusion: they suggest that if a technology is changing rapidly, then a company should keep the trade-secret.
As Jorda explain, this is a difficult question because “life span is not a particularly useful criterion since it depends on factors unrelated to the development itself. Estimating the future lifespan for a product under development may also be a highly subjective matter. In some circumstances this question might not have to be considered.” (comment of the question 4 in the Jorda’s report).
Concerning new area of technology proposed by Daizadeh et al, there is no suggestion about this in the Jorda’s roadmap.
Finally, about reverse engineering and licensing opportunity, both models cross each other.
To sum up, in my opinion the Jorda’s roadmap is more accurate. But it is interesting to keep an eye on the Daizadeh et al’s roadmap before taking a decision. Furthermore, it is important to keep in mind the industry in which the company performs in order to adapt conclusions of each roadmaps to the characteristics of the industry concerned.
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The two roadmaps overlap each other for some elements. They both say that if the product is likely to be licensing, patent is a better protection.
In the 6-step roadmap they don’t speak about a limit of time but well about the technology evolving fast. We can think that it’s a bit the same of saying that the innovation is limited in time because when the technology evolves fast it means that the product will be worthless quickly. In both models they say that if the product can be reverse engineered it’s better to patent our product.
The two roadmaps are different because one is a way in 6 steps. It’s a kind of path you have to accomplish to arrive to your answer. All the step are linked and every step are important. It’s the path that is important to know if it’s better to use secrecy or patent. The other roadmap is a list of independent questions and your results depend on the total score you get. All the score together are important but not the score for each question takes independently. Besides the second model is more complete. It takes more elements into account.
The two models are complements because the first way of choosing with the 6 steps is a better way to have a correct answer but the second model with the 11 questions is more complete. So we can use both to be sure our decision is the best.
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The two methods differ in certain aspects:
Firstly, they do not focus on the same aspects. Daizadeh et al. center their analysis only on the technologic aspect as a source of revenue and strategic advantage. Jorda on the other hand is more subtle in his approach as he defines in every question the subject of his analysis and therefore broadens his horizon, talking not only about the process but also about the final product, culture (information), trade secrets, … A larger field of interest renders the analysis more complete as it doesn’t reduces the competitive advantage to a mere technology but includes a more larger scope of aspects that could be worth protecting.
Secondly, Jorda is richer in the descriptions of the situations which could modify the decision to purchase a patent or not. For example he describes a situation where patenting could benefit a company not based on the technology or the market it evolves in but based on the internal structure of the company, where trade secrets could leak due to a lack of control on the dissemination of information. He also addresses the links that may exist between competitors as described in question three for example.
Finally, Daizadeh et al.’s methode is more practical as it shows a clear path based on the answers of the six questions. This method is easier to implement as it leads to the answer to the question the manager is asking himself “Whart should I do”. By following this canvas a decision can easily be taken and implanted. Jorda’s method on the other hand gives an insight about the situation but doesn’t gives any clear answer whereas to yes or no there should be a patent. This is mainly the fact because there’s no ranking in the questions (no path) so in the event that the mean is at fie or six, no decision can be taken.
One last contradiction is the answer to question three (Daizadeh et al.) and four (Jorda). Whereas question three is given a strait answer, saying the benefits won’t outweigh the costs and risks of patenting. Jorda is less direct on the matter saying it depends on the situation and not positioning himself on the matter.
On the other hand both methods have some overlaps for example questions one, two and five (Daizadeh et al.) are present in Jorda’s analysis in the exact same way. They address the same issues.
All in all I would say that both method complement each other neatly. Daizadeh et al.’s enables a quick analysis of the situation and decision making which could be interesting to guide managers. Jorda’s method on the other hand has the advantage of broadening the scope of the analysis and taking into account more factors. The downfall of the method is that it might not be possible to generate a clear answer to whereas a patent is needed. By combining the two a richer analysis of the situation can be provided giving more tools to the decision-maker.
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There are several ideas put forward by Daizadah et al (2002) and Jorda (2007) that overlap and complement each other, but there are also several important differences in between both models.
The first noticeable difference is the fact that Jorda puts no emphasis at all on the importance of technology in whether a development should be kept secret or if it should be patented. This is quite interesting given that a third of Daizadah et al’s model of decision is based around technology, as he considers whether or not it is fast changing area of technology and whether it is a new area of technology.
On the other hand, Jorda’s roadmap is based a lot more upon the consequences of a potential patent or trade secret whereas Daizadah’s model is more of a descriptive one. Five of Jorda’s questions look into the consequences of the decision to patent a product/idea or to keep a trade secret: questions 2, 3, 7 and 10 all do so. Daizadah however only has one question that looks into a consequence: he asks about whether or not the potential revenue would be greater than the cost of patenting an idea.
Jorda is far more detailed in this sense has he tries to understand the competitive advantage or disadvantage in the case of exclusiveness, the consequence of disclosure, and the dissimilation of information from within the company.
As for the similarities between both models, we can point at first of all that there are two questions that come up in both roadmaps. The first question in Jorda’s eleven-question model asks if the product is a commercial one of if it is subject to licensing. This same question comes up in Daizadah’s map aswell, even though it isn’t the first question in his model. The second question that appears in both models is one regarding the possibility or not of reverse engineering the idea or product.
The final observation that I would like to make is of a fundamental difference between Jorda’s and Daizadah’s designs; on the one hand Daizadah offers a very binary map, where each question is answered either by yes or no. This means that there is a very clear route to each of the three potential outcomes, while it does also mean that the model is a very rigid one.
Show lessJorda’s approach is a lot more detailed and flexible; he offers the possibility of answering the eleven questions on a scale from one to ten, and the result isn’t a unique one as is the case in Daizadah’s map. Jorda sees the potential outcomes as complementary and overlapping; this means that one solution, may that be patenting, keeping a trade secret or making a defensive publication, doesn’t necessarily exclude the other ones.
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In comparing the two approaches the first thing I noticed was the difference in the complexity of questions the roadmaps proposed. I find the roadmap proposed by Daizadeh er al. more direct because the questions require “yes or no” answers whereas the questions proposed by Jorda ask to give a precise score to the different aspects that are investigated.
Show lessAs for the questions proposed, the two approaches are quite different. They analyse obviously the same topics but asking slightly different questions. I think that the questions of Jorda are more technical and touch a wider area of topics. In the Jorda’s roadmap questions are divided into marketing, technical and legal categories, whereas in the tool provided by Daizadeh questions are not so clearly distinguished and there isn’t an analysis of legal aspects. The two approaches only in part overlap. For instance they both investigate the aspect of reverse engineering and independent discovery (step 2 of the Daizadeh’s roadmap and questions 6 and 8 of Jorda’s roadmap). Also the outcomes of these cited questions overlap because for both approaches if reverse engineering is easy and it is likely that others can discover the innovation, patent is more favourable.
I can say that the approach of Jorda complements the one of Daizadeh in the sense that it completes the analysis with more detailed questions but the opposite is not true. Daizadeh covers for example the topic of the novelty of innovation that is not studied by Jorda but I think that this is not enough to consider the approach of Daizadeh as a complement of the Jorda’s one. The legal aspects are considered only by Jorda. Daizadeh investigates what the possible litigation costs are but only under an economic perspective comparing them with the potential market revenues. Also for the questions regarding market, the roadmap of Jorda complements the Daizadeh’s one because Jorda studies, for example, more in detail the competitive advantages of maximizing exclusivity for the innovator, and the disadvantages given by the maximization of exclusivity by the competitors.
As for the outcomes, the roadmap proposed by Daizadeh et al. is more complete as it involves three alternatives of choice (trade secret, patent and defense publication) whereas the roadmap proposed by Jorda involves two alternatives: trade secret and patent. Anyway the approach of Jorda can lead to an intermediate result that Jorda interprets as “it doesn’t really matter which approach is followed initially”; anyway, according to me it can be interpreted as leading to a choice that can involve a mixture of patent and trade secret protection.
I don’t think that the two approaches in some sense contradict each other because, comparing the questions, even if they are different, they lead to the same outcome if you answer in a coherent way to them.
According to me both approaches have advantages and disadvantages. The Daizadeh’s approach is more direct and permits a more quick analysis of the problem, but, being more rapid is also less detailed and can have the problem of skipping important subjects. On the other hand, the approach of Jorda permits a more detailed analysis but it is also more problematic. Giving a precise score to this kind of questions requires a detailed analysis of the problem and the definitions of specific thresholds that may be not so easy to find. It has to be specified what the various scores indicate. For instance, for questions 11, all the levels of difficulty have to be determined in order to decide where to position the innovation on the scale; and the same is also for all the other questions.
In conlusion, I argue that the roadmap of Jorda is more detailed and complete and therefore, according to me, it gives a more useful instrument that allows a more deep analysis of the problem.
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According to Jorda, patents protect inventions and trade secrets protect collateral know-how. Moreover, these IP rights categories are not mutually exclusive but effectively complementary and even mutually reinforcing. They are interdependent because most of R&D data, results and associated collateral know-how for any innovation cannot be disclosed in a patent appli-cation. Corresponding to the author, the question is not so much whether to patent or to keep the innovation secret, but rather what to patent and what to keep a trade secret.
The approaches for the two proposed roadmaps are slightly different. Since the one proposed by Jorda is a set of questions where the responses are totaled in order to decide whether an innovation should be patented or kept secret, the one of Daizadeh et al. is more like a decision tree following six consecutive steps which result either in secrecy, in patenting or in defensive publication.
However, both schemes complement each other. On the one hand, Daizadeh’s approach is more superficial but clearer and easily results in a decision. On the other hand, Jorda’s methodology considers a larger set of more detailed questions including competitive advantage (questions 2-3), the ability to develop alternatives (question 5) and legal constraints, i.e. the control over the dissemination of information inside a company (question 10) or the ease of detecting infringement (question 11). These aspects are unfortunately disregarded by Daizadeh et al. The later also include the innovativeness of the technology area (step 4).
There is also some overlapping. Both roadmaps treat the question of public disclosure. Although Jorda raises the question about the disclosure of unprotectable information (question 7), Daizadeh et al. have a more general approach since they only look at the necessity of public disclosure of a patent (step 1). Moreover, both schemes suggest patent protection if the innovation can be easily reverse engineered, discovered independently (questions 6 & 8; step 2) or subject of licensing (question 1; step 5).
The roadmaps contradict each other in the question about the limitation in time. Although Daizadeh et al. recommend a patenting approach for a short commercial life (question 4), Jorda favors trade secrets for the same life span (step 3).
In order to facilitate companies the choice between secrecy and patenting, both roadmaps should be converted into one scheme, including the convenience of the Daizadeh’s approach and the different aspects of the Jorda’s approach.
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There are several ways to compare the two schemes, as they differ in their extent as well as in some aspects.
The roadmap proposed by Daizadeh et al. starts off with the necessity of public disclosure as the first question. It also incorporates issues concerned with the idea in question itself, like the possibility of licensing the invention or the threat of possible reverse engineering, in both cases promoting to patent the invention. Afterwards there are some issues on the list that are not concerning the innovation itself but the area of technology it lies within. In case of a quickly evolving technology area, the roadmap proposes not to patent the invention and instead to keep it as trade secret. The unique aspect which sets the two schemes apart is the last question, promoting to publish the invention in technical or trade journals in case the potential market revenues outweigh the patent and associated costs. This represents a rather fast and uncomplicated way to claim IP rights for the invention, while at the same time potentially preventing competitors from filing patent claims on a similar idea themselves.
However, the second roadmap as proposed by Jorda goes a step further, partly because of the larger number of questions which grant the scheme a wider scope. In particular, it incorporates a bigger amount of questions which propose to keep the invention as a secret. For instance, it takes a deeper look at other consequences of the idea’s commercialisation as a product, thus considering possible competitors’ decisions to develop alternatives to the product once it has been published. In addition, the roadmap considers the setting in which it is difficult for the company to determine whether or not competitors are using the development, if so also promoting to keep the idea a secret. At last, the roadmap proposes to think about possible lawsuits rising up after the commercialization of the innovation or during filing the patent. They decrease product revenue and in doing so, again, provide a clear incentive to keep the respective innovation a trade secret. However, other stakeholders are also considered. For instance, Jorda proposed to think about the inner structure of the company and if a innovation really can be kept as a secret within the company borders with respect to employees and all other persons than are involved in the development process.
Of course, the two roadmaps overlap in certain areas. Common issues mentioned in both roadmaps are the threat of possible reverse engineering once the development has been disclosed to the public as a commercial product, as well as the opportunity of licensing which requires the respective invention to be patented first. Those aspects, both advocating the patent solution, derive from their common prerequisite: the public disclosure of the development.
In my opinion, I consider the roadmap proposed by Daizadeh et al. to have integrated a more cleanly separated set of questions covering most of the areas where issues might arise, whereas it lacks some of the specificity of Jorda’s approach. The ideal roadmap might be a combination of those two.
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