Practical Considerations in Trade Secret Licensing

15 Pages Posted: 2 Oct 2013

Date Written: October 1, 2012

Abstract

In recent years, patents have become a prevalent instrument in technology transfer, both domestically and internationally. Commercializing patents, however, requires transfer of not only the patentable matter, but collateral know-how as well. Despite apparent incompatibility of full disclosure required by patents with complete confidentiality of trade secrets that protect know-how, both categories of intellectual property are often combined in a “hybrid” license. Their synergy has been proven to result in successful transfer of technology and in benefiting both the licensee and licensor.

Licensors put their trade secrets at great risk of being lost or misappropriated by either a licensee or a third party. Nevertheless, protecting this type of intellectual property in licensing transactions is often neglected and left for the boilerplate language of licensing agreements. This paper evaluates the mechanism of trade secret licensing from the licensor’s perspective, identifies common pitfalls, and proposes practical solutions on minimizing risks of losing proprietary know-how.

Suggested Citation

Tsotsorin, Maxim, Practical Considerations in Trade Secret Licensing (October 1, 2012). Available at SSRN: https://ssrn.com/abstract=2334060 or http://dx.doi.org/10.2139/ssrn.2334060

Do you have negative results from your research you’d like to share?

Paper statistics

Downloads
789
Abstract Views
2,357
Rank
58,217
PlumX Metrics