Protection of Trade Secrets; current issues

WIPO-UKRAINE SUMMER SCHOOL ON INTELLECTUAL PROPERTY – JULY 2011

Outline

What are trade secrets?

Trade secret protection

Benefits

Risks

Some issues

What are trade secrets?

Confidential business information giving a competitive edge

Manufacturing

Commercial

Sales methods

Distribution methods

Consumer profiles

Advertising strategies

Supplier and customer information

Manufacturing processes

Trade secret protection - 1

Not a registered protection

Article 39 of TRIPS - natural and legal persons shall have possibility of preventing information being disclosed to others without their consent in a manner contrary to honest commercial practice

Has to be secret – not generally known in circles which normally deal with such information

Has commercial value because it is secret

Reasonable steps have been taken to keep it secret

Governments have obligation to treat data submitted to them as confidential

Trade secret protection – 2

Confidentiality agreements

Part of employment contract

Part of franchise agreement

Part of B2B contract

Informal confidentiality

Other laws relating to theft, bribery, industrial espionage

Remedies

Civil for breach of contract

Criminal for theft, trespass etc

Trade secret protection – 3

United States Economic Espionage Act of 1996

Coverage

All forms of scientific, technical, economic, engineering

E.g. Patterns, plans, compilations, programmed devices, formulas, designs, prototypes, methods or techniques, processes, procedures, programs or codes

Tangible or intangible

Stored in any fashion such as physically, electronically, graphically, photographically, writing

Benefits of trade secrets

No registration procedure

No disclosure

Immediate effect

Wider scope

No time limits

Risks of trade secrets

Enforcement my be difficult and costly

No protection against independent discovery or reverse engineering

Including 3rd party patent protection

No exclusivity once made public

Some issues

How effective in global economy

Contractors, consultants, outsourcing

Different countries have different laws

Is harmonisation possible?

Capacity of SMEs to build secrecy regimes

Post-employment situation