Patents And Trade Secrets: The US Case Of The Cosmetic Implant

Back in April 2026, IAM reported on a significant decision by the US Court of Appeals for the Federal Circuit in a dispute between International Medical Devices and several defendants involved in developing a cosmetic medical implant. In overturning an approximately US$18 million judgement awarded at trial for trade secret misappropriation, the Court reaffirmed a fundamental principle of IP law: information disclosed in a patent application or a published patent cannot, in principle, continue to benefit from trade secret protection. 

Beyond its relevance to the medical device and cosmetic surgery sectors, this decision illustrates the limits of combining two forms of innovation protection: patents, which are based on the disclosure of the invention, and trade secrets, which – conversely – require maintaining confidentiality. 

A case stemming from the development of a cosmetic implant 

The dispute concerned a silicone medical implant intended for cosmetic procedures. The plaintiffs argued that several technical features of the device, as well as aspects of the surgical procedure, had been shared with a surgeon during training conducted under a Non-Disclosure Agreement (NDA). They alleged that this information was subsequently used to help develop a competing product. 

The trial jury found that several trade secrets had been misappropriated and awarded the plaintiffs approximately US$18 million in compensation, including punitive damages. 

Patent disclosure precludes trade secret protection 

However, the Federal Circuit overturned the judgment, ruling that much of the information claimed as trade secrets had already been disclosed in earlier patents. 

This reasoning aligns with the fundamental logic of patent law. In exchange for a temporary right of exclusive exploitation, a patent holder agrees to make their invention public through a description precise enough to enable a person skilled in the art to reproduce it. Once this disclosure has occurred, the information revealed becomes publicly accessible and can no longer be treated as a trade secret. 

The Court thus reiterates that a company cannot simultaneously claim the benefits of a patent – which rely on the public disclosure of the invention – and the benefits of trade secret protection for the same information. 

A different application of the invention does not restore confidentiality 

The plaintiffs argued that the prior patents related to a therapeutic context distinct from the aesthetic application developed later. 

The Federal Circuit rejected this argument. It held that a change in the field of application is insufficient to confer confidential status upon technical information that has already been made public. What matters is the content of the disclosure, not the commercial or medical use subsequently envisaged. 

This clarification is of significant practical importance for innovative companies: technology that has been disclosed does not regain its status as a secret simply because it is applied to a new market. 

Confidentiality also requires concrete protective measures 

The case did not turn solely on the disclosures contained in the patents. The plaintiffs also claimed trade secret protection for a list of surgical instruments. 

Here again, the Court refused to grant the requested protection. It noted that the list had been transmitted via email without any specific confidentiality marking and that the confidentiality agreement concluded between the parties was insufficient, on its own, to automatically protect all communications. 

This analysis underscores a fundamental principle of trade secret law: information qualifies for such protection only if its holder implements reasonable measures to maintain its confidentiality. An NDA is an important tool, but it is no substitute for an internal information protection policy or the clear identification of confidential documents. 

Impact on other aspects of the dispute 

The absence of legally protectable trade secret information had consequences extending beyond the mere issue of misappropriation. 

The Federal Circuit also overturned findings of liability based on breach of a confidentiality agreement, noting that the agreement excluded information already available to the public. Furthermore, it challenged a ruling regarding co-inventorship on certain patents, holding that the alleged contributions needed to be re-evaluated in light of the fact that the information in question was already public. 

However, the Court upheld a separate finding of trademark infringement, which was unrelated to the trade secret issues. 

A strategic reminder on patents and trade secrets for innovative companies 

This decision highlights the need to define a coherent strategy for protecting intangible assets at a very early stage. 

Patents and trade secrets serve different purposes and operate according to sometimes incompatible logics. The former relies on a trade-off between disclosure and temporary exclusivity; the latter protects information that retains economic value precisely because it remains secret. 

Companies must therefore identify precisely the information they wish to disclose to obtain patent protection versus the information they intend to keep confidential – such as specific manufacturing processes, technical parameters, quality control methods, or organizational know-how. They must also implement concrete protective measures: tailored confidentiality agreements, sensitive information classification, access restrictions, tracking of information exchanges, and internal confidentiality management procedures. 

A decision with international implications 

Although based on US law, this decision is relevant far beyond the United States. Major IP systems, particularly in Europe, also rely on the principle that patent protection entails the disclosure of the invention. The ruling thus highlights a universal requirement in innovation management: the legal protection of a technology depends as much on the quality of the IP strategy as on the technical value of the invention itself. 

Key takeaways for innovators 

By overturning a judgment awarding nearly US$18 million in damages, the US Federal Circuit does more than simply resolve a dispute concerning a cosmetic medical implant. It reaffirms a fundamental principle of IP law: information disclosed in a patent loses its confidential status and can no longer, in principle, be claimed as a trade secret. 

This decision serves as a reminder to companies not to view patents and trade secrets as interchangeable or cumulative forms of protection. On the contrary, their effectiveness relies on a strict distinction between information intended for public disclosure and information whose value depends precisely on its confidentiality. 

Novagraaf’s experts can assist you in implementing a protection strategy tailored to your technologies, covering everything from drafting confidentiality agreements to leveraging your IP assets. They also help you strike the right balance between information that must be disclosed in a patent application to meet the "sufficiency of disclosure" requirement and information best kept confidential as know-how or trade secrets. This balancing act is essential to ensuring effective innovation protection while preserving competitive advantage.