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No longer the neglected step-child of IP:
Trade secrets have been the neglected step-child of IP but that situation is fast changing. There are various forces at play helping to increase the importance of trade secrets.
Firstly, the law is changing.
· The Defend Trade Secrets Act passed in the USA in May 2016
· The EU Directive on Trade Secrets is enacted by member state on 9 June 2018
· China explicitly included trade secrets in its 2018 revisions to the Anti Unfair Competition Law
Changes in the eligibility requirements and enforcement mechanisms of patent laws around the world, but especially those in the US – and especially as they relate to software and business methods, make trade secrets an attractive mechanism to protect a company’s competitive advantages. (more…)
Prior art – Prior art or state of the art or background art in most systems of patent law constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent’s claims of originality. If an invention has been described in the prior art, a patent on that invention is not valid.
It is therefore of no surprise that prior art searching is a key offering by IP Firms and IP Service Providers and a key part of the work conducted by the Patent Examiner at the Patent Office. (more…)
The case study:
In very general terms, a case study is an account of an activity, event or problem that contains a real or hypothetical situation and includes the complexities one would encounter in the workplace.
This particular case study involves an innovative company headquartered in Europe but with operations in a dozen countries around the world. It employs approximately 2,600 people worldwide. It is a market leader in its particular sector.
The Legal & IP function of this company is relatively small in size with a total headcount of seven people, some located at corporate headquarters in Europe and the others located in the USA. The function is however supported by a number of external Legal & IP Firms.
This case study focuses on the activities of this company in the area of trade secret asset management. (more…)
A template is a file that serves as a starting point for a new document. When one opens a template, it is pre-formatted in some way to guide the user.
One simple yet effective way to build a level of discipline into the invention capture process is to define a standard template for inventive ideas and insist it is taken into use. It is worth defining the inventive ideas template with carefully considered fields and guidance tips, which meet the needs of your invention capture process. This will help the inventor community understand what is expected of them. It also ensures inventive ideas are captured in a consistent manner.
If the idea is of potential value and is patentable, then the inventor should complete such an inventive ideas template. Completing the template should be considered as the first step in the patent creation process but it does not constitute the filing of the patent application.
The template should be completed for each discovery or inventive idea that has some potential commercial value or represents a breakthrough in technology. (more…)
If an organization is only concerned with handling a few creative / innovative ideas from time to time, then one can probably stay with some handcrafted approach for capturing these ideas, analyzing them and determining what to do with such ideas (file a patent application, keep as a trade secret, publish, etc.). However, as volumes increase, then it is much better to deploy some robust ideas capture, analysis and review process underpinned by a fit for purpose system. This paper looks at how such organizations should run efficient and effective review meetings. (more…)
By its very nature, there are both rewards and risks associated with intellectual property (IP). Risk is the chance of something going wrong, and the danger that damage or loss will occur. Risk management is the process of analyzing exposure to risk and determining how best to then handle such exposure.
Of course, not all IP risks are the same and they may be broken down into a variety of different categories. One such category is ‘origin’ namely identifying from where the IP related risk comes. (more…)
A trade secret is a formula, practice, process, design, instrument, pattern, commercial method, or compilation of information which is not generally known or reasonably ascertainable by others, and by which a business can obtain an economic advantage over competitors or customers. The scope of trade secrets is virtually unlimited. (more…)
What is an IP licence?
An IP licence in its simplest form is an agreement where an IP owner (the Licensor) permits another person (the Licensee) to engage in activities that, in the absence of the IP Licence Agreement, would infringe the Licensor’s legal rights attaching to the IP. In return the Licensee pays the Licensor a fee or confers some other benefit. It is a written agreement that gives rights to do something that would otherwise be an infringement of the IP rights of someone else.
A typical case may involve the Licensor granting the Licensee the right to make and sell patented product perhaps worldwide and for the life of the patent(s). The Licensee agrees to pay the Licensor a royalty, defined as a percentage of Net Sales Value. The Licensor agrees not to make or sell patented product itself nor permit any 3rd Party to do so. (more…)