Professional Documents
Culture Documents
Keeping Confidence:
Do-it-yourself
form of IP
• Provides
competitive Kept
advantage confidential
• Potential to
make money
Technical &
Financial
scientific
information
information
TRADE
SECRET
Commercial Negative
information information
Typical examples
• How to demonstrate:
– benefits derived from use
– costs of developing the TS
– licensing offers; etc.
– actual or potential
3. Reasonable steps
To avoid disputes:
WRITTEN AGREEMENT
+
ASSIGN
in advance all trade secrets developed
during employment or commission
Question 3
1. Independent creation
– without using illegal means or violating agreements or law
patent
TS protection
provides
no exclusivity !
What is lawful?
2. Reverse engineering
– Common practice among companies: studying
competitors' products
• to make a product that will compete with it
– Solution: contractually forbid reverse engineering
(in license agreement)
– Technological protection measures
HOW TO PROTECT
YOUR TRADE SECRETS?
1. Identify trade secrets
– Shredding
– Oversight; audit trail
6. Restrict public access
to facilities
– Overheard conversations
– Documents left in plain view
– Unattended waste baskets
7. Maintain computer secrecy
1. New employees
3. Departing employees
• further limit access to data
• exit interview
• letter to new employer
• treat fairly & compensate reasonably
for patent work
9. Measures for third parties
• LICENSE
– e.g. in combination with patent license
– Advantage: additional revenues
– Disadvantage: risk of disclosure (potential loss)
– In some countries, restrictions
TS Licensing
1. Contract law
• When there is an agreement to protect the TS
NDA/CA
anti-reverse engineering clause
• Where a confidential relationship exists
attorney, employee, independent contractors
2. Monetary damages
• actual damages caused as a result of the misuse (lost profits)
• amount by which defendant unjustly benefited from the misappropriation (unjust
enrichment)
3. Seizure order
• can be obtained in civil actions to search the defendant's premises in order to
obtain the evidence to establish the theft of TS at trial
4. Precautionary impoundment
• of the articles that include misused TS, or the products that resulted of misusing
To establish violation, the owner must be able to
show :
PROTECTING INVENTIONS:
no registration registration
- less costs (but: costs to keep secret) - fees (registration + m ain tenance)
- im mediately available - takes tim e to get patent
Secret !
Strategic
TS business
decision
patent
TS
© ID
TS
•Part of the idea
Things to bear in mind
(if patentable)
© Mark Sokoloff
Patentable
idea
Public
N Easy to RI,
N Technology Y
disclosure independ. changing TS
necessary? discover? rapidly?
Y N N
Y
P Y
Things to bear in mind
A A
TS TS P
B B
C C
restrict access
Email:
german.cavazostrevino@wipo.int
http:/www.wipo.int/sme