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genuine need for access. Typically this will be no more than a
handful of people, and may even exclude senior executives.
Additionally, those people who are party to the information
must be constrained by their contracts of employment not
to share the confidential information with any third parties
during or after their employment.
As the whole of the value of a trade secret is tied up in its
character as a secret, all of the value will be lost if a third
party independently discovers the secret, e.g. through their
own research efforts or by reverse engineering. There is
then an additional risk that that third party could obtain
patent protection for the technology underlying the trade
secret.
Some protection from this situation is provided by “prior
user rights” legislation, which ensures that businesses are
free to continue to use technology that they were using prior
to the filing of a patent by a third party. However, such prior
user rights are not recognised in all territories, and even in
those territories that do, the rights are usually very restricted
- typically they extend only to the activities that the user was
actively engaged in or preparing for at the time of the patent
filing, meaning that the prior user is not entitled to extend
his use into other fields.
One way to prevent such a situation is by publishing
details of new innovations. Publication does not confer
any protection for the innovation, and indeed destroys
any secrecy in the information that is published. However,
publication of technical details of the innovation (even in
an obscure and difficult to find journal) will also prevent
anyone else from obtaining valid patent protection for the
information that is published. Thus, publication can be a
powerful tool for ensuring that an organisation is free to use
its innovations without fear of being on the wrong end of a
patent infringement action.
Publication can of course have wider commercial benefits,
helping a business to gain recognition and traction in the
relevant technological communities, and building awareness
of the business and its technologies to encourage adoption
of the technologies and to drive recruitment of talented
individuals who can spur further development and growth.
As will be clear from the discussion above, it can be difficult
to decide whether to patent an innovation, maintain it as a
trade secret or publish details of the innovation. How can
this be resolved?
The answer will depend on a number of technical factors
and commercial considerations such as the overall strategy
of the business and the markets in which it is operating.
One approach is to identify the factors that might influence
the decision to patent, publish or keep an innovation
secret, and allocate a score to each relevant factor, based
on the strategy and objectives of the business. The total
or aggregate score for a particular innovation can then be
used to inform the decision to patent, publish or keep an
innovation secret.
