Filing for a Patent Versus Keeping Your Invention a Trade Secret

By: Orly Lobel

November 2013

For many years, beginning in 1942, Premarin was the only hormone replacement therapy drug on the market derived from a natural source. The drug, provided as a treatment for negative symptoms of menopause, became the most widely prescribed drug in the US and Canada during that time. Wyeth, a pharmaceutical acquired by Pfizer in 2009, was the sole supplier of Premarin. A series of patents were issued on the drug in the 1940s, but long after they had expired, there were still no generic competitors on the market. How could Wyeth sustain this exclusivity for such an extended period of time, decades beyond the 20 years of the patent’s term?

The answer is that no one succeeded at duplicating the extraction process, which Wyeth had not patented, but rather kept as a trade secret. The key ingredient in Premarin is conjugated estrogens extracted from pregnant mare urine. That’s right. The secret sauce of the multimillion drug is horse pee, and the process for extracting the equine estrogens was kept in Wyeth’s manufacturing plant in Brandon, Canada. While heated debates continue over the impact of the patent wars on market competitiveness, the implications trade secrets are more likely to be misunderstood. Trade secrets are thought to be the real workhorse of the knowledge economy, because of their pervasive importance. At the same time, trade secrets are viewed as the stepchild of intellectual property because they operate, by definition, in secrecy, and we know much less about their role in market competition than we know about patents, copyrights, and trademarks.

Why do some companies choose to patent their innovation while others choose to hide it? Compare the paradigmatic early American trade secret – the one and only recipe for Coca Cola – to the paradigmatic patent – the telephone. Alexander Graham Bell patented the telephone in 1876 as United States Patent No. 174,465, the most valuable patent in history. Ten years later, in 1886, Dr. John Pemberton created what is now the world’s most famous trade secret: the Coca-Cola formula. Insiders know it as Merchandise 7X. No single contractor has the full recipe; each is tasked to prepare only parts of the classic blend. The company has kept the secret for over a century by purportedly storing it in a vault in downtown Atlanta, and restricting access to only a handful of executives. Coca Cola could have patented the formula, but that would only give the company twenty years of exclusivity rights to their classic taste. Instead the formula is locked up, literally and indefinitely.

A well-kept trade secret could theoretically last forever. But there is a risk. Unlike with patents, it is perfectly legal to reverse engineer and copy a trade secret.  A patent lasts only 20 years, but during that period, the protection is far stronger: independent invention is no defense in a patent suit. In 1998, a group of horse ranchers suddenly set up a production facility and filed an Abbreviated New Drug Application (ANDA) for a generic version of Premarin. They claimed to have succeeded in mare urine extraction where others had failed. This, of course, represented a serious threat to a hugely profitable product. If the horse ranchers had indeed been independently and honestly lucky in their discovery, Wyeth would have lost its market dominance. Such was not the case. Wyeth launched an extensive, and expensive, investigation leading to evidence that the horse ranchers had improperly encouraged one of Wyeth’s own former scientists to provide the secrets to the manufacturing process. The court issued a sweeping and devastating judgment against these new competitors, ordering a permanent stop to the use of the trade secret.

Patents and trade secrets present opposing choices. Trade secrets derive their legal protection from their inherently secret nature. Patents, by contrast, can only be protected through public disclosure. In fact, a patent will be invalidated if the inventor refrains from describing important details. This requirement, called enablement, requires a patentee to disclose enough information for others to use the invention after the patent has expired.

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