Trade Secrets and know-how

We look regularly at the range of registrable Intellectual Property (IP) rights and, of course, this is mostly what we deal in here at Mathisen & Macara LLP.  However, one potential disadvantage of registering your IP is that it involves making a public disclosure of your intellectual endeavour.  Of course, this is inevitable when you commercialise a design or use a trade mark or copyright work.  Sometimes though, you may prefer to keep your knowledge and expertise confidential.  We generally refer to such knowledge as either a trade-secret or know-how. 

In the same manner as patents, designs, trade marks and copyright, trade secrets and know-how are commercially valuable IP that can be sold or licensed or used as security.

Examples of trade secrets includes product recipes and operating or processing conditions.  These are sometimes also called know-how, because they relate to the particular knowledge a person or company may have as to how best to make or use a product or process. 

Of course, to have value the trade secret or know-how must be confidential, which generally means it is only known by a restricted number of people.  Procedures must also be in place to maintain the confidentiality of the information in order to maintain its value.   It will often be necessary to use confidentiality agreements with employees and business partners.  However, even if confidentiality agreements are in place, once an agreement is breached confidentiality cannot be reinstated.  Therefore, it is still important to limit access to the most valuable trade secrets and know-how.

You should also think about ensuring you have good IT security to reduce the risk of information being stolen electronically.  You should also consider how to control access to such information.  In some case this may even include having stand alone computers without network access or data ports to limit access to and the ability to distribute the information.  Use of such computers can be more easily restricted and monitored.

The laws in place to protect trade secrets and know-how vary between jurisdictions.  Often they are based on confidentiality law or unfair competition law.  Though as mentioned above, once a secret is out, there is no means of restoring secrecy, so it is generally preferable to prevent inadvertent disclosure.

All of the attorney’s at Mathisen & Macara LLP can help you with protection of or transactions relating to trade secrets or know-how.  Please feel free to contact us to discuss your needs in more detail.