Trade Secrets

The definition of ‘trade secrets’ varies between countries, but it is essentially along the lines of any valuable business information that is not generally known and is subject to demonstrable efforts to preserve confidentiality. It is important to realise they very broadly defined, and includes technical information (e.g. how to make certain plastic), and business information (e.g. a list of clients/suppliers).

There are a number of reasons why trade secrets can be more useful that patents and an understanding of your commercial route to market is essential to help you make the decisions. Avidity-IP employs engineers and product specialists as well as attorneys meaning that we can help you come to a balanced view about how to protect your IP.

Trade secrets are not a ‘registered’ right. The information is always kept in-house. Therefore the cost to the company is normally far less than the cost of patent protection. Also unlike patents there is no set termination date, and there is no need to wait for ‘grant’ to enforce them.

Trade secrets enforcement will often relate to the knowledge known by employees. Therefore proper systems need to be in place to assess what is known by an employee on entry and exit.

Trade secrets in collaborative situations

As collaborations become more important, for example within research ecosystems, it is becoming more important to manage information flows. Developing a trade secret documentation system will assist in also documenting which external parties have been given access to trade secrets, and which trade secrets originate from external parties. That will allow ‘ownership’ of information to be tracked to help in negotiations, dealing with disputes or filing patent applications.

Trade secrets are becoming increasingly important in due diligence situations, for example before M&A, and therefore they will start to impact more to the value of the company.

Documenting trade secrets helps a company appreciate its own assets, and in particular will allow the ‘Board’ or decision-makers to get a better overview of the knowledge assets of a company.

Enforceability

Trade secrets have very limited and uncertain enforceability. They can only be used to stop information being used by competitors in a situation where it was ‘stolen’ from you, often being obtained from your ex-employees. However trade secret legislation in Europe and the US has given trade secrets a form which is closer to an ‘IP right’.

Many companies do not have policies in place for trade secrets, and few document them properly. That is changing very slowly but there is increased awareness about trade secrets.

How Avidity IP can help you with your Trade Secrets

Avidity-IP employs product engineers, scientists and project managers as well as attorneys and consequently we will not always default to a patent application if approached with a new invention. In addition, Avidity-IP can help you with the following:

• Ensuring that your trade secret processes are robust and helping you to improve them
• Synthesising the essence of what could be a trade secret and helping you to write it down
• Helping you come to a balanced view regarding how to manage your IP throughout the product lifecycle

Adrian Howson
Chief Technology Officer, Avidity IP