A Biotechnology Dilemma: Patent Your Inventions (if you can) or Keep Them Secret

By Craig R. Smith

Abstract: Biotechnology companies rely on patents to protect their most valuable inventions. Protecting biotechnology inventions has become more difficult in the last few years, however, because legal trends have created uncertainty regarding what subject matter is eligible for patent protection. Specifically, courts have narrowed the scope of what is patentable and have increasingly invalidated patents because they claim abstract ideas or laws of nature. As biotechnology companies wait for more clarity on the scope of patentable subject matter, they face a dilemma of whether to patent their inventions or keep them secret. Keeping inventions secret offers some benefits to companies, but may not be sufficient to protect the significant investment made in research and development. The biotechnology industry will continue to grapple with this dilemma until the courts, the Patent Office or new legislation clarifies the boundaries of what subject matter is patentable. This article discusses the state of the law regarding patent eligibility, how the biotechnology industry has reacted to a changing landscape, and whether trade secret protection is an adequate solution. A subscription is required to read the full article: Vol 23, No 2 (2017) issue of the Journal of Commercial Biotechnology