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It falls short of a full appreciation of innovation to consider only patentable inventions. Process innovation, for instance, is usually not patentable. Technical know-how is often not sufficiently “inventive” for patenting. However, such innovation may considerably, perhaps pivotally, contribute to the success of an enterprise.
In certain instances, the use of an invention is not detectable in the final product, and thus proof of a patent infringement would be impossible, or at least very difficult. Also under such circumstances, legal provisions provide protection for the innovation to the extent that it qualifies as know-how or a trade secret. In Switzerland, for instance, unfair competition laws and the federal code of obligations impose sanctions against unlawful use of know-how and trade secrets by third parties. The European Commission (EC) has adopted a directive regarding the protection of trade secrets, and the Member States will now have to bring into force legal provisions that comply with the directive.
One definition of know-how – or “technical trade secrets”, so to speak – requires that know-how must be secret, substantial, identified, i.e. documented.
According to the EC directive on trade secrets, they “[have] been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret”. Each piece of information which has, one way or another, been made publicly available, or which – be it with quite substantial effort – may be systematically obtained from a product available in the market, is not considered secret.
However, for what is in principle secret, it is your business to qualify the information as know-how or a trade secret and, if required, substantiate that a third party’s knowledge of a piece of information can only be the result of misappropriation. Thus, what you should do is regulate and record.
- Document all your secret information and ensure evidence on when you acquired which information.
- Explicitly mark secret information.
- Regulate access to your facilities and to secret information. Strictly limit the individuals having access to the secret information on an absolute need-to-know basis.
- Record who had access to secret information, when, how and how long.
- Adopt strict regulations on the handling of secret information. Train your employees on these regulations on a regular basis, and maintain a training record.
- Adopt and document the processes that regulate access to information and facilities as well as employee training.
- In cooperating with third parties, bring non-disclosure agreements and confidential disclosure agreements into force.
These measures may be implemented pragmatically with comparatively small incremental effort, but are of paramount value to safeguard your intellectual property.
The author: Dr. Rolf Dittmann holds a PhD in engineering sciences and is qualified as a European and Swiss patent attorney. He worked for 16 years in the patent departments of international corporations. Since 2014 he has been running his own law firm; he has been partnering with freigutpartners IP Law Firm since 2016. Thanks to his sound background from industry, he consults and supports his clients in all intellectual property-related matters, in particular in strategizing their intellectual property-related activities, in adopting and implementing appropriate processes, and in accompanying development projects.