About patenting inventions
About patenting inventions
Patents and trade secrets are different mechanisms for protecting innovation. Each involves different requirements, advantages, limitations, disclosure consequences, territorial scope, costs and enforcement considerations.
3Dresyns® evaluates the appropriate intellectual-property strategy according to the nature of each technology. For many formulations, processes and areas of technical know-how whose value depends on remaining confidential, the Company may prefer trade-secret protection rather than patent disclosure. Patent protection may nevertheless be considered where appropriate.
Patents require disclosure
A patent system is based on an exchange: an applicant seeks exclusive rights for a limited period in exchange for publicly disclosing the invention in accordance with the applicable patent-law requirements.
Under European and Spanish patent law, the invention must be described sufficiently clearly and completely for a person skilled in the relevant technical field to carry it out.
The required level of disclosure depends on the invention and the scope of protection sought.
For chemical and materials inventions, sufficient disclosure may require meaningful technical information concerning the claimed compositions, components, preparation methods, operating conditions, examples or other information necessary to enable the claimed invention.
This does not mean that every chemical patent necessarily requires disclosure of every formulation detail, every concentration, every embodiment or every item of proprietary know-how held by the applicant. The required disclosure depends on what is claimed and on the applicable patentability and sufficiency requirements.
Patent applications become public
Patent applications are generally published after the applicable publication period.
Under the Spanish patent system, a patent application is generally published after 18 months from its filing date or claimed priority date, subject to the applicable procedural rules and exceptions.
PCT international patent applications are likewise generally published shortly after 18 months from the priority date.
Once a patent application is published, the disclosed technical information becomes publicly accessible and may be searchable through patent databases.
This disclosure consequence is an important consideration when deciding whether confidential formulation or process know-how should be protected through patents or maintained as a trade secret.
Public disclosure before filing can affect patentability
Patent strategy should normally be considered before publicly disclosing a potentially patentable invention.
Under Spanish patent law, the state of the art generally includes information made available to the public anywhere in the world before the filing date through written or oral description, use or any other means, subject to the limited exceptions established by law.
Accordingly, publishing an invention in an article, preprint, thesis, presentation, conference abstract, website, technical document, public dataset or other public medium before an appropriate patent filing may adversely affect novelty and patentability.
This is one of the reasons why confidential or collaborative projects may require pre-publication intellectual-property review.
Patents are territorial rights
There is no single patent that automatically provides enforceable protection throughout the entire world.
Patent rights are territorial. Protection depends on the countries or regions in which patent protection is sought, granted and maintained.
International mechanisms such as the Patent Cooperation Treaty (PCT) facilitate the process of seeking protection in multiple jurisdictions, but a PCT application does not itself create a single worldwide patent.
Applicants must ultimately pursue protection in the relevant national or regional systems according to the applicable procedures, deadlines, requirements and costs.
Patent scope and enforcement
A patent does not provide an unlimited monopoly over an idea or general technical field. The legally relevant scope of protection is determined by the granted patent claims, interpreted according to the applicable law.
Patent validity and infringement may be disputed before competent patent offices or courts.
Obtaining and maintaining patent protection across multiple jurisdictions, monitoring potentially infringing activity and enforcing patent rights can require significant financial and professional resources.
The practical cost-benefit assessment therefore depends on factors including:
- the commercial importance of the invention;
- the expected useful life of the technology;
- the jurisdictions in which protection is commercially relevant;
- the ability to detect potential infringement;
- the ability to prove infringement;
- the likelihood that competitors could independently develop the technology;
- the possibility of maintaining the information effectively as a trade secret;
- the breadth and defensibility of potential patent claims;
- filing, prosecution and maintenance costs; and
- potential enforcement costs.
Chemical and formulation technologies
Intellectual-property strategy can be particularly important for chemical formulations and materials technologies.
Where a formulation can be readily identified, reverse engineered or independently reproduced once commercialized, patent protection may offer advantages where valid and appropriately scoped patent claims can be obtained.
Conversely, where valuable formulation, manufacturing or process information can remain genuinely secret and reasonable measures can be maintained to protect it, trade-secret protection may provide an alternative or complementary strategy.
The appropriate approach depends on the particular technology. There is no universal rule that patents are always preferable to trade secrets or that trade secrets are always preferable to patents.
3Dresyns intellectual-property strategy
Since its creation in 2017, 3Dresyns® has developed numerous innovations, formulations, materials, processes and technical solutions.
The Company has chosen to protect substantial parts of its proprietary chemical and formulation know-how through trade-secret protection, confidentiality controls, restricted disclosure, contractual protections and internal information-management measures rather than routinely disclosing every potentially patentable development through patent applications.
This strategy allows 3Dresyns® to continue developing and commercializing proprietary technologies without automatically placing confidential formulation and process information into the public patent literature.
The Company may nevertheless seek patent protection where it considers patenting strategically appropriate.
Trade secrets and patents are different
Trade-secret protection does not create the same exclusive right as a patent.
A patent may provide its owner with a legally enforceable right to prevent certain unauthorized exploitation of the claimed invention within the territory covered by the patent.
A trade secret instead protects qualifying secret information against unlawful acquisition, use or disclosure.
Trade-secret protection generally does not prevent another party from independently developing the same technology or from obtaining the same information through activities that are lawful under the applicable legal and contractual framework.
This distinction is one reason why 3Dresyns® also uses confidentiality agreements, restrictions on disclosure and, where applicable, contractual restrictions concerning reverse engineering and compositional analysis.
Reasonable secrecy measures
Information does not become legally protected as a trade secret merely because a company describes it as confidential.
Under applicable trade-secret law, protection depends on the information satisfying the applicable legal requirements, including that it is secret, has commercial value because it is secret and has been subject to reasonable measures to keep it secret.
3Dresyns® therefore uses measures such as controlled disclosure, confidentiality obligations, Non-Disclosure Agreements, restricted access, publication controls and contractual protection of confidential samples and technical information.
Patents and confidential samples
Supplying a 3Dresyns® Product, sample, experimental material or development formulation does not transfer ownership of the underlying formulation, Confidential Information, trade secrets or proprietary know-how.
Where a Recipient receives confidential information or samples subject to an NDA, restricted-use provision or valid prohibition against reverse engineering, the Recipient must comply with those obligations.
A Recipient must not use 3Dresyns® Confidential Information obtained under such restrictions to prepare, support or file a patent application without the rights or authorization legally required to do so.
Nothing in this policy prevents a person from filing a patent application relating to an invention that the person has genuinely and independently created without unauthorized use of 3Dresyns® Confidential Information.
Independent customer inventions
Use of a commercially supplied 3Dresyns® Product does not, by itself, make 3Dresyns® the owner of an invention independently created by a customer, university, researcher or other third party.
Inventorship, entitlement to apply for a patent and ownership of patent rights depend on the circumstances of the invention, applicable law and any relevant contractual arrangements.
Similarly, the fact that an invention relates to 3D printing or uses a 3Dresyns® material does not automatically give 3Dresyns® ownership of that invention.
Collaborative and custom development projects
Different considerations apply where an invention results from a custom-development project, joint research project, technology-transfer project, confidential collaboration or other activity in which the Parties have agreed specific intellectual-property conditions.
Such agreements may regulate:
- background intellectual property;
- ownership of newly generated intellectual property;
- inventorship;
- patent filing rights;
- prosecution and maintenance costs;
- territorial filing strategy;
- licensing rights;
- publication review;
- confidentiality;
- commercialization rights; and
- enforcement responsibilities.
Where an individually negotiated written agreement contains specific intellectual-property provisions, those provisions govern the matters expressly covered by that agreement.
Patent filing and Confidential Information
A patent application is itself a form of disclosure and will normally become publicly accessible if it proceeds to publication.
Accordingly, a Party receiving another Party's Confidential Information must not include that information in its own patent application unless it has the legal right and, where required, contractual authorization to do so.
Filing a patent application does not provide a legitimate means of circumventing an NDA, trade-secret obligation, restricted-use provision or other applicable confidentiality obligation.
Publications and patent filing
Where potentially patentable information arises from a confidential, collaborative or Company-supported project, publication should be coordinated with the applicable intellectual-property arrangements before public disclosure.
Where a contractual pre-publication review applies, the purpose of that review may include identifying potentially patentable information and allowing an entitled Party a reasonable opportunity to seek patent protection before publication.
Publication review does not give 3Dresyns® ownership of an independently created invention merely because a 3Dresyns® Product was used.
Further information is available in 3Dresyns restricted publications and Permission to publish.
Patent applications do not guarantee patent rights
Filing a patent application does not guarantee that a patent will ultimately be granted.
Patentability is assessed according to the applicable legal requirements, which may include novelty, inventive step, industrial applicability, sufficiency of disclosure and other formal and substantive requirements.
Likewise, grant of a patent does not mean that its validity or scope can never subsequently be challenged.
Different jurisdictions may reach different outcomes
Patent laws are territorial and national or regional patent systems are not completely identical.
The same or related invention may therefore encounter different examination outcomes, claim scope, procedural requirements or enforceability issues in different jurisdictions.
This does not mean that any particular national patent system is inherently inferior or superior. It reflects the territorial nature of patent law and differences between applicable legal systems and examination procedures.
3Dresyns position
3Dresyns® considers patents, trade secrets, confidentiality and contractual protection to be complementary intellectual-property tools rather than interchangeable solutions.
For technologies whose value depends strongly on confidential chemical compositions, formulation know-how, production processes or other non-public information, 3Dresyns® may choose not to seek patent protection where doing so would require disclosure inconsistent with the Company's long-term intellectual-property strategy.
For other technologies, patent protection may be strategically appropriate.
The decision is made according to the technical, commercial and intellectual-property characteristics of each development.
Governing principle
Patent protection provides territorial exclusive rights in exchange for legally sufficient disclosure of an invention. Trade-secret protection preserves qualifying information through secrecy rather than publication. 3Dresyns® evaluates which approach, or combination of approaches, best protects each technology.