WIPO releases Guide to Trade Secrets and Innovation

It might be argued that the most frequently discussed topics in the field of intellectual property are copyright, design law, patents and trade marks. However, other branches of IP are deserving of close attention, one such area being trade secrets. The World Intellectual Property Organization (WIPO) has just launched a comprehensive guide, accessible online, with the aim of increasing awareness of trade secrets and promoting their use. This Kat is pleased to share a review of this guide.

It is confidential, says the Kat

Structure of the guide

This comprehensive guide is divided into seven sections and an appendix listing selected material references. 

Part 1 provides a concise overview of the contents. Its intended audience is wide (i.e., Government agencies, staff of WIPO, IP professionals, business managers). It begins with a reiteration of the function of IP in the economy and in facilitating technological advancement. In this regard, trade secrets serve two distinct yet interrelated purposes: first, to safeguard the valuable confidential information of businesses; secondly, to maintain a competitive edge in the global marketplace.

 

Part 2 focuses on the strategic roles of trade secrets in the innovation ecosystem. This part recalls the fundamental objectives of trade secrets protection, namely, to foster fair competition, enhance the efficiency of the innovation ecosystem and facilitate the generation of a diverse array of commercially valuable information. Furthermore, it examines the evolving strategic roles of trade secrets in the modern economy.

Part 3 sets forth the concept of trade secrets. The term "trade secret" is used to describe confidential information that is neither generally known nor accessible, possesses commercial value, and is subject to reasonable steps to maintain its secrecy. This part is complemented by a non-exhaustive enumeration of the types of information that may be protected as such (e.g., technical and scientific information, business and commercial information, financial information, and failed research). This part also outlines the legal safeguards available to individuals or entities in possession of such information. Exceptions and limitations to trade secrets are also developed (e.g., independent discovery, reverse engineering, and whistleblowing). Furthermore, this part presents a comparative analysis between patents and trade secrets, presented in a straightforward table.

Part 4 focuses on trade secret management. It highlights the four main objectives that organizations must pursue in order to maximize their profits and maintain a competitive advantage over their rivals: protection against misappropriation and leakage of trade secrets; protection against contamination with third parties' trade secrets; the strategic exploitation of trade secrets; and their valuation.

Part 5 deals with trade secrets in litigation. Its aim is to shed light on the possibilities for litigious or non-litigious action when a trade secret has been misappropriated. This section also deals with the relief available before the courts (i.e., injunctions, monetary remedies). Advice on building a strong trade secret case is also distilled clearly (e.g., choosing defendants, burden of proof, collecting evidence). This part also details the various defences to be adopted in the event of an allegation of trade secret misappropriation. Another crucial point is the preservation of trade secrets during trials. A few lines are also devoted to cross-border trade secret litigation.

Part 6 concerns trade secrets in collaborative innovation. It is divided into 4 main sections. The first concerns particularities of trade secret management in collaborative innovation. The second deals with management of trade secrets thought different phases of collaboration. The third provides details on the protection and use of trade secrets by universities. The final section looks at handling trade secrets in university-industry collaboration.

Part 7 deals with trade secrets and digital objects. It lists the sub-categories of digital objects and their eligibility for protection as trade secrets. The management of digital trade secrets is also extensively developed, including their identification and selection, with illustrative examples provided throughout. This part also examines one of the key advantages of digital trade secrets, namely the timestamping facility. Strategic advice on protecting trade secrets using large language models is also provided. The question of challenges and risks in protecting digital trade secrets and mitigating strategies is further developed. Finally, a summary comparison of the use of trade secrets in relation to other IP rights concerning digital objects is provided.

Thoughts

The value of this guide is significant. If the main objective of this guide is to enhance the visibility of trade secrets, this Kat thinks that it has been achieved. Indeed, the guide may prove a valuable resource, offering insights into the concept of trade secrets and its potential integration into day-to-day strategies. It is sufficiently detailed to stand on its own as a comprehensive reference work.

It is important to clarify its scope to avoid any misunderstanding though. Its objective is to identify and elucidate common strategic, practical, and legislative points across different countries and sectors. It would be erroneous, therefore, to assume that its use would absolve the reader from the necessity of investigating the relevant local legislation pertaining to trade secrets. It might be worthwhile for this guide to be supplemented by future developments relating to specific legal systems. It should be further noted that its annex is intended to be regularly updated, including the addition of new content. This will ensure its continued appeal over time.

One of its key strengths is its educational aspect. The subject is, to say the least, a highly complex one. Nevertheless, its structure, which progresses from simple definitions to more complex applications, facilitates the reader’s own understanding. There are also concrete examples throughout, which serve to make the guide both approachable and practical. Its accessibility via the WIPO website renders it an even more convenient resource for those wishing to consult it. These features are consistent with the guide's broad target audience.

The diversity of subjects addressed is another noteworthy advantage. It does not merely provide a simple definition and subsequent implementation. It also incorporates practical developments that are particularly beneficial for IP professionals engaged in day-to-day work.

In sum: this Kat strongly recommends reading this guide.