Uncorking Trade Secrets: Sparking the Interaction Between Trade Secrecy and Open Biotechnology

THE LAW AND THEORY OF TRADE SECRECY: A HANDBOOK OF CONTEMPORARY RESEARCH, Rochelle Dreyfuss and Katherine Strandberg, eds., Edward Elgar Publishing, Forthcoming

21 Pages Posted: 5 Dec 2010

See all articles by Geertrui Van Overwalle

Geertrui Van Overwalle

KU Leuven - Centre for IT & IP Law (CiTiP)

Date Written: December 4, 2010

Abstract

The exchange of patented inventions and related know-how often takes place through bilateral or cross licenses. Our previous research examined the role of collaborative licensing models in streamlining access and use of patents, specifically in the field in genetics. The present essay examines the potential role of collaborative licensing models in facilitating the transfer of related trade secrets. The central question, around which the essay revolves, is whether the transfer of know-how, incident to a patent, might be accelerated by the use of collaborative licensing strategies. In other words, can collaborative institutions fuel the sharing of trade secrets and reshape them into “open secrets,” thereby fostering the construction of “open biotechnology” projects and infrastructures? This question is explored from a conceptual-theoretical and empirical perspective, rather than from a normative point of view.

The present paper will conclude that, in principle, collaborative license mechanisms, in particular patent pools and open source regimes, may facilitate the transfer of know-how complementary to patented inventions, and thus assist in uncorking know-how and fostering “open secrets.”

Clearinghouses seem somewhat less fit to assist in the transfer of confidential technical information incidental to patented inventions, but they may be useful for the exchange of confidential business information. In practice, however, knowledge producers have been somewhat reluctant to make use of collaborative licensing models in the life sciences in order to engage in hybrid licensing agreements involving the exchange of both patents and trade secrets. The absence of a personal relation of trust and Europe’s lack of a well established codification of trade secrecy law modeled along the lines of the Uniform Trade Secrets Act (UTSA) may well account for some hesitation about participating in such collaborative rights platforms.

Keywords: Patents, Trade Secrets, Know How, Biotechnological Inventions, Trips Agreement, Uniform Trade Secrets Act (UTSA), Open Secrets, Open Biotechnology, Disclosure, Patent Pools, Clearinghouses, Open Source

JEL Classification: D23, D45, H 41, H51, I18, K11, L14, L 65, O31, O32, O34

Suggested Citation

Van Overwalle, Geertrui, Uncorking Trade Secrets: Sparking the Interaction Between Trade Secrecy and Open Biotechnology (December 4, 2010). THE LAW AND THEORY OF TRADE SECRECY: A HANDBOOK OF CONTEMPORARY RESEARCH, Rochelle Dreyfuss and Katherine Strandberg, eds., Edward Elgar Publishing, Forthcoming. Available at SSRN: https://ssrn.com/abstract=1720082

Geertrui Van Overwalle (Contact Author)

KU Leuven - Centre for IT & IP Law (CiTiP) ( email )

Sint-Michielsstraat 6 box 3443
Leuven, 3000
Belgium

HOME PAGE: https://www.law.kuleuven.be/citip/en/staff/00015469

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