WIPO: shaping the global policy agenda for trade secrets
ANDRÁS JÓKÚTI, DIRECTOR OF THE PATENT AND TECHNOLOGY LAW DIVISION at the World Intellectual Property Organization, caught up with WIPR Insights’ rankings editor, Baron Armah-Kwantreng, about the organisation’s work on trade secrets and how it fits with the wider remit.
WIPO POLICY ADVICE AND CAPACITY BUILDING
WIPO’s Patent and Technology Law Division deals with law and policy of patents and other related forms of IP, such as utility models, trade secrets, and layout designs of integrated circuits.
As the “technology” part in our name indicates, we have a remit beyond patents, yet we are of course limiting ourselves to areas that have an industrial property implication. Thus, some technology-related areas such as data law or liability for acts carried out by artificial intelligence are not directly dealt with by the team.
On the legislative and policy advice side, we provide assistance on request mainly to developing countries on shaping their IP systems in these areas.
On the other hand, member states engage us in capacity building activities, via requests from a stakeholder group, or a national or regional IP Office. We also provide in-depth information, courses and lectures, and produce studies in selected topics of high importance. Moreover, we administer the Patent Law Treaty on procedure and formality matters, and the Budapest Treaty on the International Recognition of the Deposit of Microorganisms. We also serve as the secretariat to the Standing Committee on the Law of Patents, a WIPO global forum facilitating the progressive development of the international patent system.
AN EMERGING FOCUS ON TRADE SECRETS
There is an emerging focus on trade secrets at WIPO where my division is taking the lead.
We promote intellectual property neutrally as a broad toolkit to aid the development of the economies of our member states and the development of global business. Consequently, trade secrets are an important piece of our activities and we are keen not to be perceived as merely a patent promotion facility.
Naturally, WIPO has a huge operation in patents. The PCT system is an extremely functional instrument of international patenting. Yet we take a more nuanced approach and suggest entities select the best option for their situation.
Trade secrets can be complementary or antagonistic to patent protection, or an alternative. The details of a patented invention cannot be trade secrets because of the disclosure requirements in patent law. Other innovations may not be patentable, but trade secret systems may provide some legal protection of information that is not disclosed.
WIPO AND TRADE SECRETS: WHAT’S NEXT?
WIPO has held two symposia on trade secrets. The first was in 2019 but the pandemic postponed the second edition until May this year. These events put trade secrets in the limelight, and gave a comprehensive overview of the protection of undisclosed information, from international policy through regional and national legislation to practical business issues.
Our approach on trade secrets is still being formulated in this developing area. The symposia were good foundation events and we aim to build on their momentum.
“PATENTS AND TRADE SECRETS MAY BE COMPARED TO BATMAN AND ROBIN: THEY HAVE A SPECIAL RELATIONSHIP, BUT THEY DO NOT NECESSARILY PLAY THE SAME ROLE.” - ANDRÁS JÓKÚTI, WIPO
As a foundational document, we will produce a White Paper in 2023 that will address all relevant aspects of trade secret protection and management. This publication can be regularly updated with new developments in different jurisdictions, and will be useful to both policy makers and business.
We are planning more thematic events around the topic as well, incorporating member states’ requests for awareness raising of trade secrets. Alongside policy presentations, local and regional experts will share their experience at these events.
A rolling programme on areas of interest to stakeholders may include topics like the valuation of IP, trade secrets in the medical sector, or the confidentiality of regulatory test data.
We sometimes group local events into a regional event with our colleagues in the development sector. We typically organise events with a partner: a large association, or an IP office, or a set of IP offices for a regional audience.
Our recent events have been online, which were easier to organise, but perhaps with less impact than an in-person meeting.
PATENTS AND TRADE SECRETS: BATMAN AND ROBIN
Trade secrets may be perceived from at least three key angles.
One is the conflicted but complementary relationship between patents and trade secrets. Patents and trade secrets may be compared to Batman and Robin: they have a special relationship, but they do not necessarily play the same role. They can go on adventures together, but can also separate into spin-off episodes, and have their own superpowers and weaknesses. Compared to the specific provisions of patents, trade secrets are relative rights and sometimes have a bad reputation for their secrecy and non-sharing. A more nuanced view presents trade secrets as a more nimble tool for businesses.
Trade secrets can be an important alternative asset for SMEs and startups for whom patents may not yet be relevant. These businesses have to be mindful that some trade secrets mature into patent applications. How these two IP tools interact is an important theme for businesses.
TRADE SECRETS’ ADDITIONAL FUNCTIONS: TECH TRANSFER AND PROTECTING NEW TYPES OF ASSETS
Another angle is trade secrets’ role in national and international technology transfer. What kind of trade secrets system might a country adopt to attract knowledge sharing and collaboration?
A third is emerging technologies and the frontiers of technology that may not easily fit into traditional IP. Trade secrets can be a useful option for companies to protect software, unpatentable information, data and data sets.
Legislative initiatives, such as the proposed Data Governance Act in the European Union, bring new challenges to this aspect because some data sets will be mandated to be shared in the IoT field. Legislators are grappling with these pressure points.
TAKING REASONABLE STEPS: THE PEEL AND THE PULP
Underlying these themes is the importance of effective intellectual property and trade secrets management by companies. Focus needs to be given to both the unregistered and registered IP portfolio. The unregistered portfolio needs to be identified in the company books. Companies need to be aware of their trade secrets risks and of the countermeasures they can take.
Companies need to take what courts agree to be reasonable steps to protect their trade secrets. Trade secrets protection is like an orange peel, a layer of legal protection against misappropriation. The bulk of the work, however, is the pulp of the orange with a sound company IP or trade secrets management system. If confidential information is misappropriated, then the strength of the company’s legal case is dependent on the robustness of that internal and contractual protection.
“WHEN A MEMBER STATE ASKS US TO REVIEW THEIR LEGISLATION WE WORK WITH THE COUNTRY TO FORMULATE TRADE SECRETS PROVISIONS FITTING TO THEIR LEGAL TRADITIONS AND ECONOMIC SITUATION.”
LAW FIRMS AND TRADE SECRETS
Law firms can help companies focus on trade secrets concerns as much as on patents and other registered rights. As there is no registry of trade secrets per se, some providers are offering technological tools that can assist with trade secrets management.
Law firms may consider teaming up with trusted technology providers to offer clients a one stop shop on these broader solutions.
EVANGELISING ON TRADE SECRETS
We advise member states which do not have a trade secrets protection system in place, or where important legislative aspects are lacking. These countries sometimes have limited access to innovation results.
When a member state asks us to review their legislation we work with the country to formulate trade secrets provisions fitting to their legal traditions and economic situation. We may make recommendations, but as sovereign nations they choose the options.
Our aim is to assist these countries in understanding that building a robust trade secrets system can inspire businesses to share their know-how with local manufacturing entities.
WIPO will not set up a trade secrets register for businesses or other entities. There are commercial providers that offer services of that kind. Nor do we deal directly with the trade secrets of businesses, the unpublished patent applications notwithstanding, the security of which is a top priority.
Instead, we deal with trade secrets policy, trade secrets awareness raising and capacity building. WIPO acts as a neutral convener and facilitator of discussions among its members and the experts of this topic.
BUILDING TRADE SECRETS REGULATION
Developing trade secrets regulations is different to building the more intricate framework of a patent system. Trade secrets provisions do not have to be overly long, especially if there is not already a system in place.
The essence is to provide the positive elements of protection balanced by appropriate limitations to avoid abuse of the system. We try to achieve this balance with our advice, taking into account other legal areas.
Trade secrets is mostly considered an IP issue but it overlaps with other areas of law, such as unfair competition or civil law, where different types of secrets (eg professional or bank secrets) can be covered in the same legislation.
Moreover, there are important labour law implications as many trade secrets cases stem from employees leaving a company. Constitutional law can also be relevant, as some external limits on trade secret protection stem from the protection of fundamental rights.
There are intensive discussions, not only in WIPO, but in WTO and WHO, on access to medical technologies, vaccines, therapeutics and diagnostics. These talks often address the appropriate role for the IP system and whether patents and associated know-how regulation are a facilitator or a roadblock.
WIPO does not give legal advice on individual questions about trade secrets misappropriation. However, for general trade secrets queries we have an email address ( tradesecrets@wipo.int) and a dedicated webpage with FAQs.
