Know-How 102 / How to identify your know-how type?

It is very common to see that kind of provision in a license agreement serving to define know-how: “Know-how shall mean technical data, formulas, standards, technical information, specifications, processes, methods, codebooks, raw materials, as well as all information, knowledge, assistance, trade practices and secrets, and improvements thereto, divulged, disclosed, or in any way communicated to the Licensee under this Agreement, unless such information was, at the time of disclosure, or thereafter becomes part of the general knowledge or literature which is generally available for public use from other lawful sources. The burden of proving that any information disclosed hereunder is not confidential information shall rest on the licensee.”

Based on the definition above, one can have basically an invention (product or method), design, trademarks, copy rights or trade secrets as viewed in Table 1. It is a good investment tool to have those intellectual property protections before your product or service goes public or negotiates with third parties.

Table 1

Intellectual rights are basically collected in two separate categories, registered and unregistered.

Registered Rights: Patents, Utility Models, Registered Trademarks and Designs

The inventor, creator or designer has no rights until they make a registration via authorized Offices. Ownership can be checked by looking at the register.

Unregistered Rights: Copyright, Database Rights, Unregistered Trademarks and Designs

They exist from the moment the works are created. Ownership is harder to clarify without a register.

In order to understand the whole concept, it can be reviewed over a “smart phone” as stated in Figure 1.

Figure 1

With the help of Techin2B platform, one can easily create an know-how asset such as patent, design or trademark ideas in cooperation of the other team members under the same workspace. Even if you can’t be sure what type of know-how you should choose, it can be assigned to related Techin2B professionals under the “Evaluations” or “Notes” tab as stated in Figure 2.

Figure 2

Alternative Know-How Strategies

Apart from creating an IP strategy, different know-how strategies can be followed for some reasons such as cost efficiency, time management issues or lack of awareness. Alternatives to IP protection, what can be done is listed below with pros and cons. 

Information disclosure:

+Cheap

+Preventing others from patenting the same invention

-No exclusivity

-Revealing the invention to competitors

Doing Nothing

+No effort required

-No exclusivity

-Open to reverse engineering

Confidentiality

+Cheap

+No disclosure

-Open to reverse engineering

-Hard to apply

-Cost of maintaining secrecy

According to needs of your organization, TLS.IP professionals can be assisted in determining a know-how strategy and maintaining your competitiveness.

References:

https://en.wikipedia.org/wiki/Know-how

https://www.epo.org/learning/resources/ip.html

https://www.asylegal.com/intellectual-property-ip-strategy-for-start-ups/?utm_source=rss&utm_medium=rss&utm_campaign=intellectual-property-ip-strategy-for-start-ups

https://ipstrategy.com/2018/01/08/alternative-ip-strategies/