Compelling Trade Secret Transfers

84 Pages Posted: 4 Jan 2023

See all articles by David S. Levine

David S. Levine

Elon University School of Law; Stanford University - Center for Internet and Society

Joshua D. Sarnoff

DePaul University College of Law

Date Written: December 25, 2022

Abstract

The unprecedented COVID-19 virus has brought to the forefront many challenges associated with exclusive rights in information, data, and know-how, all of which may constitute protected trade secrets. While patents have received more attention, trade secret information has limited the ability to perform research, develop, test, gain regulatory approval for, manufacture, and distribute globally and at sufficient scale and affordable prices the needed vaccines, therapeutics, diagnostics, medical devices, and personal protective equipment. Voluntary licensing efforts have proven inadequate to supply pandemic needs. Thus, compelling the transfer or licensing of trade secrets is needed to properly address COVID-19, but more importantly, to address future pandemics and other serious global problems such as climate change.

This Article explains the nature of trade secrets and their protection. It then describes the failures in COVID-19 responses resulting from trade secrets that were not voluntarily licensed. It explains why patent law disclosures have been inadequate to assure competitive global research, development, and production.

Given the need for compelled trade secret transfers, the Article surveys the relevant international intellectual property law treaties addressing trade secrets. It demonstrates that, consistent with international law obligations, governments are free to compel trade secret transfers. Further, governments may not be obliged to award compensation for such transfers when regulating to address public health. Given this national freedom to act, the Article then provides numerous examples of existing United States, European, and some other authorities that have been or could be used to compel the transfer or licensing of trade secrets. It also notes the potential to adopt more explicit legislation authorizing compelled or induced behaviors. This survey of authorities illustrates that compelling trade secret transfers or licensing should be unobjectionable whenever there is a need to protect lives, health, or the economy. Accordingly, the Article provides a first critical step toward rethinking the nature of international trade secret protections, and it seeks to develop the political will for governments to protect the global public from the harms that trade secret rights can generate.

Keywords: COVID, trade secrets, licensing, patents, phrma, knowledge transfer, TRIPS, DPA, vaccine, know-how, show-how, proprietary, confidential

JEL Classification: I18

Suggested Citation

Levine, David S. and Sarnoff, Joshua D., Compelling Trade Secret Transfers (December 25, 2022). Hastings Law Journal, Forthcoming, Available at SSRN: https://ssrn.com/abstract=4311880 or http://dx.doi.org/10.2139/ssrn.4311880

David S. Levine (Contact Author)

Elon University School of Law ( email )

201 N. Greene Street
Greensboro, NC 27401
United States

HOME PAGE: http://hearsayculture.com

Stanford University - Center for Internet and Society

Palo Alto, CA 94305-8610
United States

HOME PAGE: http://cyberlaw.stanford.edu/blogs/levine/

Joshua D. Sarnoff

DePaul University College of Law ( email )

25 E. Jackson Blvd.
Chicago, IL Cook County 60604-2287
United States
312-362-6326 (Phone)

Do you have a job opening that you would like to promote on SSRN?

Paper statistics

Downloads
130
Abstract Views
1,105
Rank
327,823
PlumX Metrics