The representatives of various companies or inventors very often turn to our company and provide the descriptions of their ideas, which are not implemented as particular technical solutions, with a request to help them to get a patent or, if this is not possible, to defend their ideas in any possible way, especially this refers to the frameworks of an enterprise/organization.
As you know, the idea that is not implemented in a particular technical solution can not be patented as an invention, utility model or industrial design, therefore in such cases we tell our clients about the impossibility of patenting their ideas.
However, the employees of enterprises or the inventors do not stop after getting a refusal and continue to insist on getting the possible proposals from us to protect their ideas, which are set out on paper, but they can not be realized due to various circumstances.
Some clients are interested in the following question: Can the information be defended, in particular, the documentation describing the technical solution that is not implemented, such as know-how? Let us try to answer this question. To do so, let us turn to the legislation.
In accordance with Article 1465 of Part 4 of the Civil Code of the Russian Federation
1. Know-how is a manufacturing secret, which is recognized as the information of any nature (manufacturing, technical, economic, organizational and others) about the results of the intellectual activity in a scientific and technical field and about the methods of carrying out the professional activity that has a real or potential commercial value due to the fact that it is unknown to third parties, if the third parties have not a free access to this information on the legal grounds, and the holder of such information undertakes the reasonable measures aimed at keeping its confidentiality, including by introducing a commercial secret regime.
2. The information, which is subject to be disclosed obligatory or a restriction of the access to which is not allowed in accordance with the law or other legal act, can not be recognized as a manufacturing secret.
In accordance with Article 1466 of Part 4 of the Civil Code of the Russian Federation
1. The holder of the manufacturing secret has an exclusive right to use it in accordance with Article 1229 of this Code in any manner, which does not contradict to the law (an exclusive right to the manufacturing secret), including in the case of manufacturing articles and implementing economic and organizational solutions. The holder of the manufacturing secret may dispose of the said exclusive right.
2. The person who has become a holder of the information constituting a protected manufacturing secret in good faith and independently from other holders of the manufacturing secret shall acquire an independent exclusive right to this manufacturing secret.
In accordance with Article 1467 of Part 4 of the Civil Code of the Russian Federation
The exclusive right to the manufacturing secret shall be in effect as long as the confidentiality of the information constituting its content is kept. The exclusive right to the manufacturing secret shall be terminated for all right holders since the moment the correspondent information ceases to be confidential.
Thus, know-how allows its holder to gain advantages in the market (a commercial benefit), due to the fact that the information is unknown and inaccessible to the third parties.
Such information is a valuable asset of the organization, which has an impact on its competitiveness in the market. Disclosing such information can cost the company a lot of money or even results in the loss of the entire business.
In this connection, it is very important to take timely the measures to keep its confidentiality.
How can one defend one’s know-how?
Currently, the most effective method and the most widely used one is the introduction of a commercial secret regime in the enterprise/company.
A commercial secret is a special regime of confidentiality of the information (know-how), which implies undertaking the following measures by its holder:
1. determining the list of the information constituting the commercial secret;
2. restricting an access to this information;
3. registering the persons, who have an access to this information;
4. including the relevant duties on keeping the commercial secret into the job agreements with the employees and the economic agreements with the partners and clients;
5. placing a mark “commercial secret” with the indication of its holder on the documents, other media (including flash-drives, disks, etc.).
Thus, in order to defend the company's know-how, it is necessary to adopt a Provision on a Commercial Secret, in which you must indicate the information, which has a restricted access, as well as a procedure for an admission to the confidential information and handling it.
In order to protect one’s know-how, it is important to formalize competently the documents with the employees and counterparties, to organize a document circulation of the information constituting know-how, in particular to conclude a Confidentiality Agreement with the employees and with the legal entities/counterparties, with whom you plan to share the secret information.
Thus, for example, the employees should sign an order on non-disclosure of the information; and also, the corresponding duties (on observing the commercial secret) should be included in the job agreements. Each employee must be acquainted with the Provision on a Commercial Secret against signature.
It is also necessary to appoint an employee (employees) responsible for keeping records of the persons, who are admitted to the confidential information. The whole know-how information must be documented and kept separately from other information and documents of the company.
In case of disclosure of the commercial secret, disciplinary sanctions may be applied to the employee, in particular, the dismissal according to Subparagraph в of Paragraph 6 of Part 1 of Article 81 of the Labour Code of the Russian Federation. In addition, the employee, who has disclosed know-how, is subject to bear full material responsibility (Article 243 of the Labour Code of the Russian Federation).
As to the legal entities, the similar Confidentiality Agreement shall also be signed with them, by analogy with the one that our company signed with you, when you had sent us the information about your technical solution (idea).
Such agreement should be concluded even at the stage of the negotiations, since involving the counterparties is often carried out by providing the information about the product, which, in one way or another, includes the confidential information.
Thus, the main purpose of the Confidentiality Agreement is to defend the confidential information of the parties, which they share with each other during the negotiations, transactions and the fulfillment of the obligations.
Further, if any agreements are concluded with the counterparties, they shall also include the conditions on non-disclosure of the confidential information, as well as the responsibility in case of disclosing it.
Based on the above, it can be concluded that the defence of the technical solutions that are not implemented and set out on paper, which contain the information about the design features, manufacturing technology, any documentation relating to this solution or other information in the capacity of know-how is possible and it is an alternative to patenting. At the same time, it should be noted that a patenting procedure involves disclosing the essence of the solution with its further publication and providing the information about the technical solution to an unlimited range of persons, what contradicts the nature of know-how.