EP #146: Patents vs. Trade Secrets — Protect Your Concrete Ideas

Seth Tandett (00:00)And welcome to another episode of the Concrete Logic Podcast. And today I have Chen Wong with me. She's CEO of Steelike. You might recognize the name Steelike. We've had Bill Kulish on before. We've talked about Steelike before. They're the ultra high performance concrete or composite. Bill always corrects me. It's a composite, not concrete. anyways, Chen.Welcome to the show. Thank you for coming. Before we get, yeah, and she's going to, today she's going to help us learn about intellectual property, trade secrets, and patents. So we're going to talk a little bit about that. But before we get started, just want to remind everyone how you can help out the show, support the show.Chen Wang (00:27)Happy to be here.Seth Tandett (00:44)The first thing you can do is if you enjoy this episode or any of the 140 something episodes that we've put out so far, make sure you share it. Don't be selfish. Share it with a colleague or a coworker. The second thing you can do is if you go to the website www.concretelogicpodcast.comyou can leave me a voicemail by clicking there's a little microphone in the bottom right hand corner of the home page and several folks have done that. You click on that just leave me a message and what we're looking for our topic or guest suggestions so you will enjoy the podcast even more if you contribute by tell me what you want to hear what you want to learn about so that's the second way.Third way is on that same homepage is in the top right hand corner. there's a donate button and this podcast lives on donations and you can click on that and give any amount. And today I want to thank Carl Watson, CEO of Baker Con or construction. I told you I was going to mess it up. Baker construction. Sorry, Carl. but thank, thank you, Carl, for your donation is IGreatly appreciated. Carl's been a supporter of the show for quite some time, even before he joined the Baker team. appreciate your donation, Carl. So you all can donate as well, and I'll give you a shout out if you want me to. Also, if you enjoy the podcast, make sure you check out Concrete Logic Academy. So same topic, same format.as the podcast. So if you go in there and you listen to an episode, fill out and complete a quiz and we'll give you a continue educational unit or professional development hour, PDHs for you professional engineers out there that need them. Check it out. It's easy to do. ConcreteLogicAcademy.com. All right. Chin, thank you for coming on. We're going to talk aboutLike I said, intellectual property. So I don't think most people in construction think about intellectual property until they have a good idea and somebody takes it. And then I also want to talk about if we can talk about the difference between patents and trade secrets, what they are, how companies actually protect them.and what contractors and engineers should know so they don't get burned. also, before we get really into it, is to make sure you all understand that none of this is legal advice. We're just giving you a high level education so you guys understand how this stuff works. So not legal advice. All right, chin.Chen Wang (03:31)Yes. Hi, Seth. Thanks so much for having me. It's my pleasure. It's an honor. I've listened to a lot of your podcasts and it's very exciting to finally meet you and speak with you directly. So.Seth Tandett (03:33)Hi. Yep.Yeah. Can you sharea little bit about your background and why you're an expert in IP?Chen Wang (03:50)Sure, it's my pleasure. So I actually came from the IP world. I have an engineering background and then I went to law school and then I was a intellectual property attorney for a number of years, both at the law firm level as well as in-house at DuPont. And then I went into policy work for intellectual property at a trade association. So I've been talking about intellectual property for most of my career.And it's only been recently, you know, last five years that I joined Steel Like. It's a startup that Bill and I co-founded. And part of the conditions of investment by some investors was that I joined full-time as a CEO. So I'm pretty much the CEO and general counsel of Steel Like, but, you know, I still speak about IP on the circuit with, you know, various associations.and I'm very plugged into the profession still.Seth Tandett (04:47)perfect.So you can answer a lot of these questions, or maybe all of them. So can we start with what is intellectual property? What is that? Let's just start with that.Chen Wang (04:59)sure.Yeah, so we all know what a property is, right? Property is something that you own and it's either intangible or tangible. know, something tangible would be like a thing or real estate. That's real property or a tangible property. Intellectual property is really not tangible. It's not something you can really touch. It's really associated with either knowledge or a sense ofbranding. So for example, the term intellectual property includes trademarks, copyright, trade secret or know how they kind of are interchangeable and patents. That's really the four main ones. There's other ones, but those are the four that most people, you know, have a relationship with in their working world when they do. And it's a creation. It's a creation that's notreally touchable. So trademark, for example, the name Coca-Cola, for example, or the label Steel-like, or for in your case, Concrete Logic. That's a trademark, a brand. And if you register it with the United States Patent Trademark Office, it becomes a registered trademark. But even if you don't register it, you could have a trademark that isunregistered. Copyright is something usually in writing or a song, you know, so it could be a book, it could be, you know, a movie, it could be something like an audio, like a record or CD or whatever they do these days, you know, in the medium, in the electronic medium, or even your podcast, you know, could be copyrighted, you know, something. And all of these, they're property of the ownerwhobasically claim that right. And once you claim that right, there's actually conditions that restrictions that you as the owner can put on the right in terms of other people being able to use it or hear it or something. That's why you have to go buy a movie or go see a movie. In a theater, you can't just go record it and then sell that recorded movie everywhere. That would be not good.you know, that would be illegal. That would be an infringement on somebody's copyright, basically. It would be a misappropriation. And a patent is usually on a technology, on some sort of an innovative development that is an invention of some kind, a technological invention. And all of these are territorial in nature. What I mean by that is, you know,Seth Tandett (07:15)Yeah.Chen Wang (07:39)Patents, if you go get a patent at the U.S. Patent and Trademark Office and get patent granted, the territorial effect is your rights, your patent rights are within the United States. It's not going to be in England. It's not going to be in Australia. You'd have to go seek more patent rights in those other jurisdictions. So it's a legal right. And that's the same for copyright and know-how, et cetera.Except with copyright and know-how, especially know-how, you don't have to register it because it is secret. So you protect it a different way.Seth Tandett (08:15)Yeah,different control, So when a patent, it takes an investment to make that. They're quite expensive. So when do you know when you need to, I guess, go for a patent? Like when do you need to protect what you know or your idea?Chen Wang (08:34)Sure.So if you come up with invention, that's a very good question. What do do with it? Do you just, you know, keep it a straight secret or you go get a patent? It really depends on how much you have to share about it and how reverse-engineerable it is. So for example, the Coca-Cola drink, right? They probably, their formula on the Coca-Cola drink, the syrup,like what the recipe is, that would be trade secret because they're not going to share that with anyone. However, if they came up with a nifty way to bottle Coca-Cola, like a machine or something, that's something that they'd have to kind of distribute out to the bottlers, right? And so that goes out to a lot of people. And so as a result, it may not be appropriate to maintain it as a trade secret.What a patent does is it actually publishes the technology, what the invention is. It's a contract that we have, the inventor has, with the office that's granting the patent. So in the United States with the U.S. Patent and Trademark Office. And it's basically saying if you, the patent office is saying if you disclose your invention, we'll give you a monopoly for a number of years. And right now the term is20 years from the date of the earliest filing. And after that, it's dedicated to the public. So it's got a limited term. And during that 20 year period, once you get a granted patent, you can enforce it. So if you see someone copy your machine that you patented, your piece of equipment, you can go and sue them in court and pre-them from selling the machine or using the machine.Seth Tandett (10:28)So in concrete, would thatI guess would you would know this since you, you, I think you've been through this, I'm assuming. But so like a formulation or process production process or installation method or you, you mentioned equipment. So all those would be intellectual property, but are what, which of, would all those things need to be in the patent or.only or some of those things or I don't know if you were following me what I yeah.Chen Wang (11:04)Yes, absolutely. So how do youmake decisions on how to protect your innovations, right? Your technological innovations. So it really depends on what kind of protection or allocation of funds or resources people in terms of protecting it. And you have to make that kind of decision pretty upfront. So for example, if you want to keep something trade secret,Seth Tandett (11:09)Yeah.Chen Wang (11:31)You can't go file for a patent application and then decide to keep it trade secret because if you already disclosed it, it's no longer a trade secret. A trade secret is really something that you limit the knowledge of. You keep it confidential. You have to have a way of protecting the confidentiality. So this is where the non-disclosure agreement or confidentiality agreement comes in. You have to have infrastructure associated with keepSeth Tandett (11:39)Mm-hmm.Chen Wang (11:57)keepingthe trade secret and then you have to maintain secret by making sure that you're enforcing your confidentiality. When it comes to patents, you go through the application process, that's a lot of money. And then you have to make sure that you want to sue people. You have to come up with an allocation of resources so that you are suing people. You have to send them warning letters and makesure that you're enforcing your patent. Otherwise, it's just a piece of paper. So in the construction industry,you know, the way, at least for steel, like the way that we see it is our formulation is straight secret. We basically decided that we're going to, you know, maintain the formula for our UHPC as straight secret, not even our blender knows all the ingredients and recipe of that formulation. And we keep it really segmented in a way where it's protected.Okay, and then we have other forms of trade secret. know, we have constructability, know-how where we make things easier on the bridge. And we maintain that as trade secret. But we have a licensing program where we can, in fact, you know, teach that, you know, what happens on the bridge to the contractor. And we make sure that they understand that that belongs to Steel Lake and they can ownuse it with steel like UHPC and they pay a royalty on it. It's got a value to us, right? And it's got a value to them so they really, you know, can't be sharing it everywhere else. We do have patents and that's really on our equipment. We have a pumping and spraying equipment that we call a SUPA. That's patent pending and we also have tools that we patented because that's kind of like seen on the bridge. You can see it.Seth Tandett (13:24)Mm-hmm.Chen Wang (13:46)And if people start copying our tools, then we'll know we'll be enforcing those patents.Seth Tandett (13:52)That'sinteresting because I know of a, I don't want to, if I say it, I'll give it away, but someone in our industry, I've heard a certain company that has a patent on a, let's just call it, we'll say it ad mixture. And what I hear outside of them is, those people do is sue everyone that's trying to do something similar to them.And what you just told, what you just said, that kind of, that makes sense now is that's kind of part of it, the, the patent's job, right? You got to protect your patent. So that's why all these folks are getting letters saying, you're, you're, you're infringing on our patent. Stop and I guess stop doing what you're doing or else, right? Yeah.Chen Wang (14:34)Absolutely. If youhave a patent, if you decide to go the patent route, you have to enforce your patent. Otherwise, it's just a piece of paper. Yeah.Seth Tandett (14:40)Yeah.So if the, I guess the bad side of a patent is that you're publishing your secret, right? And so a trade secret you're keeping within internally and you have your own internal controls on how you keep that a secret. So I can see how that's a prone con, because as soon as you publish that patent, there's like a, it's like a clock's going.Chen Wang (14:53)guess.Yes.Seth Tandett (15:07)counting down to when everybody can just take your idea and run with it.Chen Wang (15:07)gone.Once it's published, it's published, right? It's no longer a trade secret if you get a patent. And you may not get a patent, right? You might, because a patent application can get published before you get granted a patent. Publication date is set from, you know, 18 months after your filing date.Seth Tandett (15:13)Yeah.Chen Wang (15:30)So during that 18 months, if you don't get a patent, you may have a published patent application, but not a patent. Okay. If you get a patent after the 18 months, then you can retroactively start enforcing from the date of your publication. Now we're getting too technical here. This is why you need a lawyer. But, but basically, you know, there are risks associated with patent, but with patents, you know, if you're willing to enforce it, gives you a monopoly for aSeth Tandett (15:50)Ha ha ha ha ha.Chen Wang (15:58)of period of time. So this, yeah, go.Seth Tandett (16:00)But you could handle a trade secretso that you have a monopoly as well, right, if you do it right? Yeah.Chen Wang (16:07)You can. I mean, lookat the Coca-Cola formula. It's been around for over 100 years.Seth Tandett (16:13)Yeah.Chen Wang (16:13)And there's no term limit to it as long as they keep it a secret and they're maintaining their secrecy. could actually, I think in the news there have been quite a number of times where, you know, there was criminal prosecution for people who tried to steal the trade secret. It's a theft. So, you know, employees who are, you know, or ex-employees who basically misappropriate and, you know, share trade secret unauthorized.to others, you know, the recipient of that trade secret could be prosecuted for theft and the person that actually did that sharing can be prosecuted for theft.Seth Tandett (16:51)Is thatbecause they're under a non-disclosure agreement, an NDA, or how do they enforce that, I guess?Chen Wang (16:59)Well, there's a law about trade secret misappropriation. So there's one, a federal law. And then, yes, there would be a private agreement, a nondisclosure agreement that basically, you know.contractually obligates all employees who have access to the trade secret to not share it with others. as you may know, non-disclosure agreement covers a whole bunch of confidential information. It's not just trade secret. It's anything. It could be business information. You know, it could be customer information. It could be your schedule for launching a new product.your product development, all of those are confidential information. But there are a specific set of laws associated with maintaining trade secret. And so you don't share your trade secret even within a company, even if you have an NDA. You don't share it with everybody. You share it with only people who have a need to know and only to the extent they need to know. And so there's gotta be a lot of informationinfrastructure to protect and segment trade secret.Seth Tandett (18:13)Hmm.Sounds like a lot of work.Chen Wang (18:17)It is a lot of work. think what it is is lot of planning. You have to think about your business model and how you're deploying various types of innovations and what you're going to monetize and how much is it worth to you? How much could it be worth to the company? And allocate your resources appropriately in view of all of that.youSeth Tandett (18:40)Yeah.How do you know you have a trade secret? Like, how do you know it's something that's worth something?Chen Wang (18:48)That's a really good question. I think you make a decision whether or not it is a trade secret. I would say if you don't, when in doubt, maintain it as a trade secret until it's no longer.you know, a trade secret. you, like, if you believe that there is nothing like this that has ever happened before, you know, then you start and treat it as a trade secret until you find it in a publication or you realize that someone else has something. But even if you have the exact same thing as someone else, if you're maintaining a trade secret, they won't know, right? So, you know, just like, you know, if you're Coca-Cola, if your formulafor Coca-Cola, you know, if you kept a Coca-Cola too, not call it Coca-Cola, maybe call it Seth-Cola, and you know, you realize it tastes exactly like Coca-Cola, but you came up with it independently. So long as you keep your Seth-Cola formula secret, it's a straight secret.Seth Tandett (19:45)Is there any way that you can say someone calls you and you're talking about an idea that you have and you find out later that they, right after they heard your idea, they went and did that idea. Is there any way to recoup any loss or any, anyway?Chen Wang (20:05)It depends on whatkind of arrangement you've had with that person. Right? So if you shared it without confidential agreement and there was no restrictions to what they can do with it, it's going to be difficult.Seth Tandett (20:11)huh.huh.Chen Wang (20:22)But if they're, you know, that's why there's always, you know, there should be a level of communication about expectations before you share information, confidential information with others. So, yeah, that is.very basic in terms of making sure that you're protecting yourself is, know, before you start sharing information, you think about what are the parameters, why am I sharing the information, what is the purpose, what's the goal, and what are the restrictions on the information I share, you know, to the recipient. That's basically the, you know, the elements of a confidentiality agreement.Seth Tandett (20:59)So yeah, just get them to sign something that they're not going to use or disclose what you're talking about before you tell them your fantastic idea. Yeah.Chen Wang (21:04)Yep.Right.Yeah, now when I was at DuPont, it's very difficult for us to, you know, for a large company to want to sign.every confidential information before they speak to an individual because you kind of get locked up, right? And so there's a lot of like assessments that needs to happen before an agreement is signed. So they have to have a level of legitimacy, you know, before a confidential information agreement is signed.Seth Tandett (21:41)Yeah.Cause some of them got a term tied to them too. Like you can't say anything or do anything with whatever the non-disclosures tied up with for years. We see them at Baker a lot to see drawings on and documents on a project. And they're like, if you're...Chen Wang (21:45)Right.Yes.Yes.Seth Tandett (22:05)That's why we send it to our legal department. Say, take a look at this before we sign it. Yeah, I don't think people fully look at those things because it just seems like a lot of projects these days, it's got NDA tied to them.Chen Wang (22:07)YeahRight. That's why you have lawyers. Absolutely. Yeah.And some of them could be legitimate. mean, some of them, you know, if it's a design build, for example, right, they want to make sure that their design.is maintain confidential and you're not, you know, we get a lot of that, you know, as suppliers, we may get multiple contractors wanting to share their schedule with us. And certainly we want to give them comfort that we're not going to share, you know, contractor A's, you know, design with contractor B and vice versa, right? That's segmented. So there's that. But then if it overreaches, that's where the issue becomes, right?Sometimes we just get an NDA and we don't get anything in return. That's really anything other than the documents that you would get from the bridge owner. It's like, well, what's the point of this, right?Seth Tandett (23:15)Right.Yeah, so what else should you look for? I mean, we were kind of looking at an angle as it's your idea and you're protecting your idea, but that's a great point. What else should you look for if you have to sign an NDA to see documents or whatever?Chen Wang (23:34)I thinkreally...With all NDAs, either you're the recipient or it's a mutual or you're disclosure, you've to be clear on why you're signing it. What is the purpose? Why are you signing it? What's the goal? What do you hope to get out of it? And what is the ultimate need to disclose information you contemplate?closing or sharing, right? It's all that and then you kind of need to think about, in view of that, it important for, is it in my interest to sign the SUNDEA?Seth Tandett (24:00)Mm-hmm.Yeah.Chen Wang (24:12)I mean, we have in the past, as a company, still like, refused to sign NDAs because we just thought it was overreaching. So it really just depends on what the purpose and goal and parameters are. So that's why I think that conversation with the legal counsel would be important, because it's specific to that circumstance.Seth Tandett (24:19)Yeah.Yeah. Yeah. They're just, it just seems like a lot of them. And then there's probably smaller, smaller, smaller guys. Yeah. Smaller companies out there probably just, they don't even look at it. They just sign them because they just, they want an opportunity to bid on a job. And so they don't really read through, read through them. But yeah, that's can be scary. You could get someone that likes to sue people and said you did.Chen Wang (24:42)Yeah, there are a lot of NDAs out there.Well, and that'sthe other question is, you know, how likelihood are they going to sue you? Right? So.Seth Tandett (25:09)Yeah. Yeah.All right. Well, I got a couple of quick questions and we can get wrapped this up. This has been fantastic. So what's your what's your what do you prefer patent or trade secret?Chen Wang (25:24)I have always counseled large companies, small companies, individuals to think about the portfolio of IP and what the business goal is and what your business model is.What I call an IP strategy, intellectual property strategy, know, what you file as patents versus maintaining as trade secrets versus, you know, doing a branding strategy is it needs to kind of be customized and evolve with your product, you know, from the life cycle of a product from nascent research to piloting and development to market.launch to maturity and then to re renewal of that product in innovation you have to really think about how long is that life cycle and what do I need to do to protect and capture value throughout that life cycle so for example if you have a product that's out there for 30 years you know it's not going to just be patents because you only have a 20-year term with your patents so whatyou do, right? And so you want to think about maybe keeping certain things as trade secret, certain parts of it as trade secret, you know, having other parts as patents, and you know, patenting could also be part of your marketing strategy, you know, it's not just a strategy to enforce, you know, and capture value in the enforcement way or keeping others from doing it, so it also could be part of themarketing and branding strategies. So all of these various forms of IPs need to work together. And that's something that I actually taught as a seminar and went to business by business at DuPont for a number of years. Because it is very customized. You need to think about it with the business team. Not just the R &D side or the technical side, but the entire business strategy needs to be incorporated.Seth Tandett (27:30)Yeah,Chen Wang (27:30)youSeth Tandett (27:30)I never thought of it like that. What do you think is the biggest misconception of IP in construction?Chen Wang (27:37)I don't feel like I am close enough.My career in construction is long enough to really speak at a high level. What I observe is that there is a lot of innovation going on, at least in the UHPC space within ourselves. I sense that because of that, we're a lot more proactive around managing intellectual property, whereas maybe in other parts of construction where it's beensame over and over again maybe that's not as necessary ⁓ so I don't know how conscious everyone is about intellectual property.Seth Tandett (28:12)Yeah.Youyou didn't, haven't, I know you've only been with Steel, like you said, five years, but you haven't ran across something in your work and you're like, wow, this is like, like when you were at DuPont, this was something like everyone knew and in construction, you were kind of blown away that we didn't understand parts of IP.Chen Wang (28:40)I think, I think, you know, when I was at DuPont, I actually was part of the...Corian business, know Corian the concrete countertop, it's their countertops. Yeah MMA countertops. So there was a lot of patenting associated with the formulation of Corian as well as installation manuals, copyright protection associated with installation and things like that. So there was a whole program that DuPont ran licensing Corian installers, right.Seth Tandett (28:47)huh. ⁓ okay. All right. Yeah.Chen Wang (29:12)So that's on the residential side more so than anything else. just, I don't know if that is something that's being done, you know, throughout the heavy construction industry as much. So, you know, I don't think I'm, yeah, I don't think I know enough to really opine on the industry itself. ⁓Seth Tandett (29:24)Right.I gotcha.Yeah, just, it's always, I like to hear from people that haven't been, you know, they had a previous career in another industry and they're in the concrete industry now and they hear their perspective like, wow, I can't believe you guys still think like this. But, yeah.Chen Wang (29:50)What I have to say is thatbecause the bridge owners do respect IP, they do respect intellectual property and they put in their, they're pretty clear, at least within the United States, that there should not be any misappropriation of IP, that there is a level of respect for people's patents, for example, in the construction industry. And that's really setting a tone that'sSeth Tandett (29:56)huh.Chen Wang (30:20)wonderful for innovators. At the same time, this is a very conservative industry, understandably, because the liability of trying something new could be, the exposure could be high if it doesn't work. So I think there is maybe as a result less of a...that the pace of adoption for innovations may be quite slow, which I'm not criticizing. It's just an observation, and it's completely understandable.Seth Tandett (30:53)Yeah.Well, great. This was great today. If folks want to reach out to you and learn more about what you do and steal like, what's the best way?Chen Wang (31:03)You can send me an email at chen at steelike.com and I am the lawyer for Steelike. I cannot be anybody else's lawyer since I am, you know, the home to Steelike, but I can certainly, you know, send you to my colleagues who are lawyers.Seth Tandett (31:08)All right, that's easy enough.There you go.All right. Well, thank you, Chan, for coming on the show today. I appreciate it. Learned a lot. yeah, this was great. Patent, trade secrets, and intellectual property all wrapped up. All right. Yes, ma'am. And folks, until next time, let's keep it concrete.Chen Wang (31:38)Thank you for having me.