I filed a patent disclosing an innovative product that uses a certain technology. The claims are on the product features, then I describe multiple embodiments of the technology that can enable those features. Months later, I discover another embodiment of the technology that can enable the features in my product and that works particularly well compared with the embodiments I had described in my patent.

Taking into account that my patent describes the spirit of the invention, and that my claims, system and method claims, are on the features of the product, can I keep this new embodiment of the technology as a trade secret? any reasons pro and against?

Given that I'm a very small company, my product targets a large market, the lifetime of the product will be just a few years, and my biggest risk is competition from a large company that can easily bankrupt me on trials or work around my patent. Do the reasons pro and against keeping this embodiment as trade secret change?

1 Answer 1


There is (still) a requirement that the inventor not hide the ball by holding back the "best mode" they know of practicing their invention. There are not reasons pro and con, it is a rule and not following it used to get your patent torn up. The new AIA law took away the main penalty for not providing the best mode, they can't tear up your patent. But it is still a requirement. Fortunately for your situation, the rule is "best mode known at the time of filing". After filling you are not required to inform the USPTO of any "better" ways of doing it. In fact, doing so would probably constitute adding new matter, which is not allowed. So, in this case, you can keep it a trade secret.


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