As defined by the World Intellectual Property Organization (WIPO), intellectual property (IP) refers to creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce. IP is protected in the law by, for example, patents, copyright and trademarks, which enable people to earn recognition or financial benefit from what they invent or create. By striking the right balance between the interests of innovators and the wider public interest, the IP system aims to foster an environment in which creativity and innovation can flourish. IP can also be protected by trade secrets, a less well-known IP right which, although conferring a different kind of protection to the above mentioned more traditional forms of IP, is gaining relevance today.
The immediate question for a company that develops IP or know-how as the result of its activity is whether this new IP should be protected and, if so, how it should be protected.
Unfortunately, many companies underestimate the importance of having an IP protection policy; this can cause serious trouble which might even jeopardise the company’s future. A well-defined IP protection policy establishing internal procedures and protocols for the management of IP is pivotal to maintaining continuous and steady development. Said IP policy helps to avoid certain mistakes or misunderstandings such as, for instance, the publication of inventions before a patent application has been filed. In that case, although said publication might have no negative consequences in the United States, Canada, Japan or South Korea, the patent will not be granted in Europe and a number of other jurisdictions. Similarly, consider a situation in which patent applications are filed for inventions the infringement of which by third parties cannot be soundly demonstrated; by filing said patents, the company is just advertising to the public its inventions for free. Or, finally, not properly protecting IP by assuming that third parties will never be able to arrive at the invention. This includes not implementing or not sufficiently implementing measures within the company for its know-how to be considered a trade secret by the courts.
Regarding trade secrets in particular, it is important to highlight that contrary to what occurs with patents, designs or trademarks, this IP right is not subjected to a complex administrative procedure of registration and, most importantly, trade secrets are—as the term itself implies—not published. Moreover, while patents, designs or trademarks are meant to prevent third parties from making use of the respective invention, design or trademark; the objective of trade secret protection is first and foremost to avoid sensitive information (developed IP/know-how) leaks from the company and, were this to occur, that goal mutates into a different but equally important one: that said sensitive information cannot be used by third parties, as the use of a trade secret by a third party may harm its proprietor’s interests similarly to how the unauthorised use of a patent, a design or a trademark may damage their owners. In this regard, the unauthorized acquisition, use or disclosure may constitute a violation of the trade secret, proven that its holder adopted reasonable protection measures to keep the sensitive information as confidential. Interestingly, patent or design protection can be quite often combined with trade secret protection to achieve the strongest possible IP protection.
Finally, it should not be forgotten that it is essential for a company to have its competitors under surveillance, in particular to monitor their IP activities. In this respect, it is also essential before launching a product to the market—ideally at the time of developing said product—to perform a Freedom to Operate analysis in order to have certainty that no IP rights of third parties are infringed.
Juan Arias, founding and managing partner of ABG IP, is a European patent attorney and Spanish patent and trademark agent. He has more than 30 years of experience in intellectual property (IP). Arias is a featured keynote speaker for Vitafoods Virtual Expo; his talk, ‘Securing IP protection and avoiding infringement,’ will take place on Thursday, 10 September, at noon BST. For more information on the event or to get registered, click here.