Robert Bryan, partner at BPE Solicitors LLP explains the legal perspective on protecting your “know-how”.
“Know-how”, it doesn’t have a definition in English law, although the EU technology transfer block exemption defines it as “a package of practical information, resulting from experience and testing, which is: secret; substantial and identified”.
Despite the lack of legal definition, in UK manufacturing it can prove to be one of your most valuable assets.
Unlike true intellectual property rights, there are no statutory rules for determining the first owner of know-how, or to whom an obligation of confidence is owed.
The obligation may be owed to the person who generated the know-how or to the person who paid for it. This will be determined by the contract governing its use.
Remember, when thought is being given to how to protect the know-how on which you depend, it can be destroyed by unauthorised disclosures or careless practices.
It does not confer a monopoly right, so cannot be used to prevent the use or disclosure of similar information independently developed, and may not be easy to protect if you can’t identify what is really confidential.
Despite these limitations, if use is necessary before a patent application is filed, the law on confidential information can be used. Indeed, it may be the only way of providing protection; certain materials, like business methods and computer programmes, scientific theories or mathematical methods are specifically excluded from patent protection in Europe.
In manufacturing, formulae not capable of being analysed in the final product, processes, and improvements to products or processes are all often best protected by a “know-how agreement”.
If the know-how is only going to be valuable for a short time, consider using a lock out agreement which precludes negotiation with other parties.
Key always though, is knowing how you can, legally, use that confidential information to greatest effect.
