WIPO - TCCIA WORKSHOP ON INTELLECTUAL PROPERTY FOR BUSINESS FOR SMEs Dar-es-Salaam, Tanzania, May 10 and 11, 2005

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WIPO - TCCIA WORKSHOP ON INTELLECTUAL PROPERTY
FOR BUSINESS FOR SMEsDar-es-Salaam, Tanzania,
May 10 and 11, 2005

• Keeping Confidence Trade Secrets in Business
  Strategy
• Christopher M. Kalanje, Consultant, SMEs
  Division, WIPO

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Review

• Objective
• Enhancing awareness on the potential of trade
  secrets as a business tool
• Road map WHIR
• What are trade secrets
• How can trade secrets be protected
• Identify strategic use of trade secrets
• Recapitulation of basic points

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What are trade secrets
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What are trade secrets contd.
Psst!

• Confidential information not generally known
• Derives independent economic value, actual or
  potential
• Gives the holder competitive edge
• Involves reasonable efforts to maintain its
  secrecy

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What are trade secrets contd.
Technical and scientific information
A trade secret can relate to different types
of information
Commercial information
Financial information
Negative information
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What are trade secrets contd.

• Technical and scientific
• technical composition of a product
• formula (paint, beverages)
• manufacturing methods
• device process, tool (weaving technique, baking
  clay, metal casting, embroidery)
• know-how necessary to perform a particular
  operation
• how to dye with natural Dyes

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What are trade secrets contd.

• Technical and scientific contd.
• designs, drawings, patterns, motifs
• test data, laboratory notebooks
• computer codes

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What are trade secrets contd.

• Commercial information
• Business strategy/plan
• marketing strategy, partnership strategy,
  supplier arrangements, sales methods
• list of suppliers and clients
• consumer profiles
• customer buying preferences and requirements

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What are trade secrets contd.

• Financial information
• internal cost structure
• pricing information, salary and compensation
  plans
• employees agreements

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What are trade secrets contd.

• Negative information
• details of failed efforts to remedy problems in
  the manufacture of certain products
• dead-ends in research
• unsuccessful attempts to interest customers in
  purchasing a product

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How can Trade Secrets be Protected

• Not easy to know exact value of trade secret
  because it is a secret
• In US alone loss of proprietary information,
  trade secrets and critical technologies cost
  companies between 50 - 250 billion per year
  (sources Gowlings Technology Seminar Series
  2005 D. Degnan and J. Taros)
• Such valued information must be protected (How?)

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How can Trade Secrets be Protected contd.

• Trade secrets can be protected by
• Trade secret law
• Unfair competition law?
• Material transfer agreements governs the transfer
  of one or more materials from the owner (or
  authorized licensee) to a third party for
  internal research purposes only
• Non-disclosure and/or Confidentiality agreements
• employees, business partners, potential investors
  or partners

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How can Trade Secrets be Protected contd.

• In Tanzania trade secrets are protected by
• Unfair competition law
• Contract law
• Trade secret law?

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How can Trade Secrets be Protected contd.

• What should be done?

• Identify trade secrets owned by your company
• Is it known outside the company?
• Is it widely known by employees and others
  involved within the company?
• Have measures been taken to guard its secrecy?

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How can Trade Secrets be Protected contd.

• Educate employees

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How can Trade Secrets be Protected contd.

• Notify employees of their obligations when
  employment begins (employment agreement)
• Ensure that exiting employees are aware of their
  obligations (employment agreement)
• Regular checks on compliance
• Respect other people trade secrets

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How can Trade Secrets be Protected contd.
- How trade secrets are lost
Outright theft
Source of images http//images.search.yahoo.com/s
earch/images
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How can Trade Secrets be Protected contd.

• Take reasonable measures to protect trade secrets

Put markers
Confidential
Top secret
Password
Use proprietary notices
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Trade secrets as a strategic business tool
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Trade secrets as a strategic business tool contd.

• First line of attack
• It works better if not used as a stand alone
• Need business acumen

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Trade secrets as a strategic business tool contd.

• First line of attack
• A business idea
• Creative idea with patentability potentials
• New song, story etc
• New design
• Keep it a secret before your next move!

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Trade secrets as a strategic business tool contd.
It works better if not used as a stand alone
Trade secrets
Coca-cola
Trademark
Industrial design
Patents (for preservatives in fruit drinks)
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Trade secrets as a strategic business tool contd.

• Need business acumen
• Trade Secrets
• No registration (no fees)
• No defined duration
• Maintenance costs
• Non-disclosure
• This can be done with other IP tools too

• Patents
• Registration (fees)
• Defined duration
• Maintenance fee
• Disclosure

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Trade secrets as a strategic business tool contd.

• LPPM
• Licensing
• cross-licensing negotiations
• Partnership negotiations
• Patent application-
• what part of invention should be kept a secret
• Market positioning
• tactical use of client names and profile

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Conclusion
Information must be secret
Essential legal requirements
Information must have economic value because it
is a secret
Owner must take reasonable steps to keep it
secret
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Conclusion contd.
Identify them
Remember
Protect them
Use them strategically
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Finally
thank you for your kind attention Asanteni sana