Trade secrets or patents? How to develop your IP strategy

As a startup company, the ‘know-how’ and business information you have developed can be a vital asset to the success of your business, especially when that know-how relates to the particular product or process which is a cornerstone of your business. In protecting your IP, it is essential to determine which technical information should be included in a patent application and which might be better kept a trade secret.

Trade secrets can remain in force indefinitely, provided they can be kept secret, and therefore can be a very powerful tool in maintaining your competitive advantage in the market. Some of the most successful trade secrets, such as the Coca-Cola^® recipe, have clearly stood the test of time. However, attempting to protect the wrong information as a trade secret, such as products or processes which may be reverse engineered, can leave the door open for competitors to enter your market space.

At Mathys & Squire, we have a large number of highly experienced patent attorneys operating within a wide range of technical fields who can advise you on what business information or know-how should be protected through a patent and which would be better kept as a trade secret.

What other benefits can trade secrets provide?

Licensing the particular information encompassed by the trade secret provisions can provide a useful source of additional revenue for your business and can improve the sustainability and growth of your company.

How is information classed as a trade secret?

In the UK, trade secrets are governed by The Trade Secrets Directive (2016/244/EU), which came into force in June 2018 for the purpose of harmonising the standards and protection of trade secrets across the EU.

In accordance with the directive, a trade secret includes any information which:

• 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;

• has commercial value because it is secret; and

• has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret.

As well as guiding you through which technical information your early-stage business may benefit from keeping as a trade secret, our team can advise you on what would be considered ‘reasonable steps’ based on the size of your company, its infrastructure, and the particular product/process you are manufacturing/using. We can also advise you on what appropriate action you can take should a third party unlawfully acquire, use or disclose your trade secret.