There are many good reasons to file patent applications, but one potentially significant downside is that filing a patent application results in publication of the technical details of the invention. Additionally, patents only relate to technical inventions so not all confidential information is patentable.

All companies have their secrets. For example, new manufacturing processes or improved recipes, or information on whom to buy from and whom to sell to, or a thousand other pieces of proprietary knowledge that give the company a competitive advantage.

In the UK, trade secrets are protected by the common law of confidentiality and the Trade Secrets (Enforcement, etc) Regulations 2018 (SI 2018/597) (Trade Secrets Regulations).

The Trade Secret Regulations defines a trade secret as follows:

“trade secret” means information which—

(a)  is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among, or readily accessible to, persons within the circles that normally deal with the kind of information in question,

(b)  has commercial value because it is secret, and

(c)  has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret;

“trade secret holder” means any person lawfully controlling a trade secret.

It is worth reflecting on (c) and considering some possible “reasonable steps”. At a basic level, reasonable steps can include:

  • Identification and documentation of trade secrets.
  • Recording the trade secrets in an IP asset register.
  • Ensuring appropriate security measures are in place for storing the trade secrets electronically and physically.
  • Applying access controls to limit the employees that can access a given trade secret.
  • Ensuring employees are educated on internal confidential information procedures, and are aware of their obligations with regards to confidential information.

 

At Scintilla, we help innovative companies get a grip on their intellectual property. Our unique commercial approach combines registration of patents and trade marks with strategic input so that IP can be a springboard for business growth. If you would like to discuss your IP needs, do contact us or book a free initial consultation!