This first step depends upon the nature of the product and the assumption that this innovation will be protected by U.S. intellectual property law. If the product is not easily reverse-engineered or independently developed, then trade-secret protection may be most cost-effective. However, trade-secret status depends, in part, upon the owner’s efforts to preserve confidentiality.

At a minimum, development and product feature information should remain encrypted on a stand-alone computer or disk and not attached to a computer network or internet. Minimal staff should have access to the information, and access should be conditioned upon “need to know.” All employees, as well as independent contractors and vendors, should sign confidentiality agreements. Physical entry to the development premises should be exclusively via authorized key card. All precautions should be in place prior to the development—even if there is a prior decision to patent—and this includes contacting an attorney.

If the product is easily reverse-engineered, independently developed and/or includes accessible/visible innovative features, then a utility and/or design patent should immediately be filed in the United States Patent Office. If possible, the applicant should request that the patent office refrain from publishing the application on its official website. In particular, for innovative software or related subject matter, at least one copyright registration application should be submitted to the U.S. Copyright Office and, thereafter, immediately followed by submission of a U.S. utility patent and/or design application. 

Adrienne B. Naumann is an attorney at Law Office of Adrienne B. Naumann in Skokie. If you'd like more general information about this area of the law, see our patent law overview.