If I protect a biotech invention as a trade secret, does that keep a patent holder from proving infringement?

Question

Hello everybody! I would like to ask a question regarding trade secrets and patent infringement: Assuming I have evolved some protein, using certain directed evolution techniques, that performs a specific function. Another person has a very broad patent attempting to cover all directed evolution techniques, lots of which have been in use for many years, and some sequences he or she discovered using them. The protein sequence I have evolved is different than any of the sequences covered by the patent, but is within 3% similarity, which in his patent says is the amount necessary to be considered covered by his patent. Lets say for the sake of the argument that the residues which are different provide the catalytic activity, so that 3% is what creates my proteins function. I would like to avoid any danger of patent infringement and the costs of potential litigation, etc. But what if I keep my proteins sequence and the method I used to create it a trade secret? Would that not also reduce the risk of anybody proving any infringement in the first place?

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Answers: 2 public & 0 private

Steven weinrieb
Patent Attorney

Not if the patent holder somehow finds out about your use, manufacture, and/or sale - infringement does not depend upon "public" use - a patent grants the patent holder the exclusive right to prevent others from making, using, or selling the patented device, method, or the like.

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