Beruflich Dokumente
Kultur Dokumente
OF COMPETITIVENESS OF SMEs IN THE FOOD PROCESSING SECTOR Lahore, Pakistan, June 5 and 6, 2007 Guriqbal Singh Jaiya Director SMEs Division World Intellectual Property Organization
Guriqbal Singh Jaiya Director, SMEs Division World Intellectual Property Organization (WIPO)
General principles:
Information that has commercial value and that has been scrupulously kept confidential will be considered a trade secret (TS). Owner will be entitled to court relief against those who have stolen or divulged it in an illegal manner.
This Presentation
1. What information qualifies as a TS?
Question 1
TRADE
Provides competitive advantage Potential to make money
SECRET
Kept confidential
Financial information
TRADE SECRET
Negative information
Commercial information
Software design documents Technical data about product performance Software development agreements Pending patent applications
Personnel performance
Question 2
1. The information must be secret 2. It must have commercial value because its secret 3. Owner must have taken reasonable steps to keep it secret
1. Secret
not generally known among or easily accessible to persons within the circles that normally deal with this kind of information What is generally known in the software industry? matters of common knowledge information you find at library, online database, trade journals, patent information, etc price list on website graphics & object code of software application you sell off-the-shelf
1. Secret
2. Commercial value
Must confer some economic benefit on the holder This benefit must derive specifically from the fact that it is not generally known (not just from the value of the information itself) How to demonstrate: benefits derived from use costs of developing the TS licensing offers; etc. actual or potential
3. Reasonable steps
Under most TS regimes, you cannot have a TS unless you have taken reasonable precautions to keep the information confidential Reasonable case by case reasonable security procedures Non-disclosure agreements (NDA) such that the information could be obtained by others only through improper means Importance of proper TS management program
To avoid disputes:
WRITTEN AGREEMENT
+
ASSIGN
in advance all trade secrets developed during employment or commission
Question 3
TS + THEFT
What is lawful?
What is lawful?
2. Reverse engineering
Common practice among software companies: studying competitors' products
to make software that can interoperate with the software being studied to make a product that will compete with it
E.g. decompile object code to reveal its structure and figure out the interface specifications for interoperability purposes E.g. look at a program's input and outputs
2. Reverse engineering
Solution: contractually forbid reverse engineering (in software license agreement) Technological protection measures
Question 4
Examples
Reverse engineering, independent discovery
Improper licensing Burglaries by professional criminals targeting specific technology Network attacks (hacking) Laptop computer theft Inducing employees to reveal TS
Question 5
3. Restrict access
to only those persons having a need to know the information
computer system should limit each
employees access to data actually utilized or needed for a transaction
4. Mark documents
Help employees recognize TS prevents inadvertent disclosure Uniform system of marking documents
paper based electronic (e.g. confidential button on standard email screen)
NDA/CA
Non-compete provision Reqts Limits
2. Current employees
Prevent inadvertent disclosure (ignorance) Train and educate NDA for particular task
3. Departing employees
further limit access to data exit interview letter to new employer treat fairly & compensate reasonably for patent work
Question 6
SALE
Most TS sales occur as part of the sale of the business
LICENSE
e.g. in combination with patent license e.g. software license for highly specialized program
TS Licensing
Definition of the secret subject matter
what is to be kept confidential? marked as such or broad clause?
Permitted use
disclosure to employees, professional advisors? modification of technology?
TS Licensing
Duration of secrecy obligations Royalties Sanctions Should not be subject to alternative dispute resolution
TS Licensing
Can licensee be obligated to continue paying TS royalties even if the information has entered the public domain?
TS Licensing
Mass-marketed software:
Possible to negotiate NDA with every end-user?
Software Escrow:
A viable alternative to source code license?
Question 7
3. Criminal laws
e.g. for an employee to steal trade secrets from a company e.g. unauthorized access to computers theft, electronic espionage, invasion of privacy, etc. circumvention of technical protection systems
Remedies
1. 2.
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
Question 8
PROTECTING INVENTIONS:
TRADE SECRETS OR PATENTS?
Trade Secrets
no registration
- less costs (but: costs to keep secret) - immediately available
Patents
registration
- fees (registration + maintenance) - takes time to get patent
limited in time
- generally: max 20y - but: can be invalided
no public disclosure
- but: practical need to disclose - if leak out: TS lost
public disclosure
- publication 18m after filing - if P not allowed: no TS
Trade Secrets
Large subject matter
Protection of virtually anything maintained in secret by a business that gives competitive advantage
Patents
Subject matter limited:
- Requirements: new, non obvious, useful - Scope: patent claim
Exclusive rights
monopoly to exploit the invention
"Power tool"
INNOVATIVE IDEA
Initially Later stage
Not patentable
patentable
Secret ! TS
Strategic business decision
patent
TS ID
Part of the idea
TS
(if patentable)
Mark Sokoloff
Patentable idea
TS
Y
N
Revenue potential > IP costs?
N
Y
New area of technology?
N
N
Def.publ
Licensing opportunity?
A
TS C B
TS
A B C
4. If you apply for a patent, your TS may still be protected for a while
In most countries: only publication after 18m. You may withdraw application any time < publication
In USA: possible to request non-publication of the patent application until the patent is issued
some technology (e.g. software) may be patentable in USA but not in Belarus or Europe
Question 9
WHAT TO BEAR IN MIND IF YOU SIGN A CONFIDENTIALITY AGREEMENT FOR A CLIENT ?
Developer may be given access to Clients confidential information while working for Client. Developer agrees not to use or disclose such information except as directed by Client.
Software or web developers who work for clients asking to sign CA Insist on CA that is :
- reasonable in scope - defines precisely what information you must keep confidential - limited in time (max. 5 years) - exceptions
information or technology that must be disclosed to the public in order to market the product information or technology which is part of a product sold to the public and can be reverse-engineered mass-marketed software where competition is so intense, that very likely to be independently developed by others within short time if great deal of personnel movement between competitors if customers require access to software for archive, back-up, updating, maintenance, debugging, etc.
make reverse engineering difficult (compiled code) technological protection measures copyright protection software patents
Thank You!
Lien.verbauwhede@wipo.int www.wipo.int/sme
Remember...
TS: No registration, but 3 requirements for legal protection No need for absolute secrecy, but reasonable measures Developing and maintaining TS program
< good business practice to prevent < legal requirement to enforce TS protection
Remember...
TS: Only legal protection against dishonest acquisition/disclosure/use You can sue someone who violated your TS, but that often doesnt save the TS
Remember...
The choice between TS and patent protection for an invention is irrevocable Therefore: carefully consider all relevant advantages and disadvantages from each choice both from legal and business viewpoint
Remember...
Patent and TS are often complementary to each other:
Patent applicants generally keep inventions secret until the patent application is published by the patent office. A lot of valuable know-how on how to exploit a patented invention successfully is often kept as a trade secret. Some businesses disclose their trade secret to ensure that no one else is able to patent it (defensive publication).