Patents or trade secrets

An independent European inventor developed a formula for a probiotic medical food. After participating in several fairs and discussing with different parties interested in the product, the inventor decided to enter the US and Indian markets first, as there was direct demand and great potential there. The inventor intended to bring her product to the US and Indian markets by licencing her innovation to local partners. As the discussions with these potential partners in each market were moving forward, the inventor was strongly encouraged by associates to secure patent rights in the US and Europe for the solution she had created, which would both give more value to her invention and avoid problems in the future regarding potential infringements. The inventor decided to proceed with seeking patent registration for the solution in the US and Europe, but not in India where the talks with the Indian partner for the licence of the trade secret had already succeeded and the contract had already been signed. The Indian partner had also secured a trade mark under which the product would be sold in India. After a few years, the “know-how” licensing agreement with the Indian partner came to an end, and the Indian company ceased to have rights to import, produce, market and sell the product in India. The inventor reached out to different partners and continued the commercialisation of her product in Europe, USA and India albeit under a different trade mark in the latter market. The inventor was later on informed by a local agent that the former licensee was manufacturing and selling a product with a different bacterial strain in its formulation but marketing and selling the product under the original trade mark. The inventor thus hired a legal expert to advise her on the best strategy to stop the former licensee from infringing her intellectual property rights.