One of the unsung heros of the IP world are trade secrets. They can provide substantial protection to innovators and help to protect and sustain products, as long as the trade secrets are actually kept secret. Unfortunately in the European Union the laws are generally inadequate. There may be provisions – such as in the German law on unfair competition – which restrict a former employee disclosing trade secrets to his new employer. But what happens with knowledge illicitly gained? There’s no clear answer in most countries. It’s interesting therefore to see the legislative initiative in France reported Pierre Breese’s blog here in French. The proposer, French MP Bernard Carayon (link to Wikipedia article here and personal website here) is noted for his defense of French interests.
The text (in French here) could do with some improvement, but is a great start in introducing statutory protection going beyond the theft of trade secrets by former employees. It could certainly serve as an excellent basis for an European-wide directive which is sadly lacking.
Wikipedia article on the US Uniform Trade Secrets Act is here.
It’s been a couple of interesting days in Oviedo, Spain, at the first Nanofutures conference launching the European Technology Integration and Innovation Platform (ETIP) in Nanotechnology. The ETIP is designed to be Europe’s forum for research and commercialisation of nanotech products and the conference was well attended by a number of European Commission officials and Spanish politicians. Indeed it was a little strange for this participant to participate in a scientific event at which the police were out in force, presumably to protect the (more important) participants.
I spent a lot of time talking to others in the conference about their work in nanotechnology and commercialising their efforts. A lot of the posters in the hall outlined some very basic research which is probably years from commercialisation, but there was also a fair share of small start-up companies (often from universities) who were looking for business (and often investment). The understanding of intellectual property issues varied tremendously. One conference speaker from a company based in Santander highlighted the importance of good patent protection, not only in Spain but also in other countries. She emphasised the need to get good IP advice from the very beginning.
Another speaker (who shall remain nameless) talked about the success his company was having but failed to deal with any questions about how the technology was protected. His company has no patents (at least none published on the ESPACENET database) and some of the technology seemed fairly easy to reverse engineer (but I’m only a mere Physicist and not a real Nanotechnologist). In that case one wonders how the company is protecting its long term value in intellectual assets
Walking around the exhibition and poster wall was fascinating. Some of the people I talked to really understood the value of the intellectual property developed. Others noted that they thought a patent had been filed or that they’d filed a description with a notary to protect their ideas. There seemed to be little appreciation at the conference of the need to identify and review the intellectual property developed and the most appropriate form of protection.
A patent application is only of value if it really protects the business model of the company. Filing a patent on a process so that competitors receive full details of the process (as one company has clearly done) without thinking through and protecting use cases, licensing programmes and business opportunities is often a waste of money and resources. Traditionally some companies had filed details of their ideas with a local notary and relied on these deposits to “prove” that they have prior rights to an invention. That may have been a good strategy when markets are local – but in a global business strategy it has little role to play. Prior use of an idea in Spain does not protect a company from an alleged patent infringement in the United States (or even in France). And it is also not a substitute for a functioning trade secrets policy in which a company polices its disclosure of confidential information.
One research institute revealed that they had been somewhat surprised to find that a former student had put software developed at the institute into the Internet, apparently without permission. They had been looking to commercialise some of the work and if the software continued to be available free of charge there might be little incentive for anyone to take a licence.
There were a few bright spots. Rob met an old acquaintance from German-based seed company Technostart who is involved in the EU’s ProNano project which aims to take thirty ideas through to commercialisation. She’s well aware of the need to ensure that a company’s intellectual property is well-developed. I was also there in my role as Co-Chair of the Licensing Executives Society International’s (LESI) Electronics, IT and Telecommunications committee. LESI runs a number of educations programmes on the bsuiness of intellectual property which are suitable for smaller companies. Together with his friends Jose Miguel Lissen, a patent litigator at Spanish IP firm Gómez-Acebo & Pombo, and Dario Santander from Bardehle’s Barcelona’s office, we’re looking at what value membership of LESI could offer nanotech entrepreneurs in the commercialisation of intellectual property.