The successful protection and licensing of valuable know-how is a key priority for many life sciences companies. This article provides answers to some common questions on the subject.
What is the definition of “know-how”?
Impossible to pin down, often thought of as referring to practical expertise and “tricks of the trade” as opposed to specific scientific or technical knowledge. However, it often has a wider meaning and can include very valuable technology.
Does it have to be technical?
No, think of franchising know-how, business know-how.
Is it secret?
Not necessarily, although most valuable know-how is secret.
Is it a property right?
This is controversial. Know-how is often bought and sold as if it were property, but fundamentally it is based either on contractual confidentiality undertakings or on equitable duties of confidence (often both).
Is it useful?
Very. For example, a patent may provide a 20-year monopoly on a new process or product and disclose the basics of how to implement or make it. But secret manufacturing or processing know-how developed by the patent owner can help to preserve the business’s position after expiry of the patent by making it difficult for others to achieve the same quality. Another example is franchising know-how where the confidential business and marketing know-how provided by the franchisor forms the backbone of the business and helps to ensure consistent quality across the franchises.
How can you protect know-how?
Some aspects of know-how may be protected by intellectual property rights such as copyright or design rights, but usually the main protection is keeping it secret. Non-disclosure agreements, restrictive covenants and carefully drafted employee contracts are therefore key to protecting it.
Do you have to write it down?
In principle no. But documenting it is important both from a legal and practical point of view: in order to enforce your rights in the event of disclosure or misuse, you will need to demonstrate to the court that you have treated it as confidential, for example by using passwords and restricting access.
What if some of it is in the public domain?
As a rule, know-how will be protectable even if some of it is in the public domain if, as a body of information, it is not generally known to the kind of people who normally deal with the kind of information in question.
Can you license it?
Yes, know-how is often licensed both in connection with patents and otherwise.
Our multi-disciplinary life sciences team regularly advise on know-how issues including patent and know-how license agreements. We would be delighted to assist with any queries relating to the issues raised in this article.
To read more about patent and know-how licensing, please see our recent article, first published in The Pharma Letter here.