In recent years, patents have become a prevalent instrument in technology transfer, both domestically and internationally. Commercializing patents, however, requires transfer of not only the potentially patentable subject matter, but collateral know-how as well. Despite apparent incompatibility of full disclosure required by patents with complete confidentiality of trade secrets that protect know-how, both categories of intellectual property are often combined in a “hybrid” license. Their synergy has been proven to result in successful transfer of technology and in benefiting both the licensee and the licensor. Licensors put their trade secrets at great risk of being lost or misappropriated by either a licensee or a third party. Nevertheless, protecting this type of intellectual property in licensing transactions is often neglected and left for the boilerplate language of licensing agreements. This paper evaluates the mechanism of trade secret licensing from the licensor’s perspective, identifies common pitfalls, and proposes practical solutions on minimizing risks of losing proprietary know-how.
- intellectual property,
- trade secret,
Available at: http://works.bepress.com/maxim_tsotsorin/3/