The invention which has not been patented for lack of the necessary requirements (the so-called non patentable invention) or for a choice of the undertaking, can be subject to a “secrecy grading”, that is as know-how. The latter includes also the non-patented, not only the non-patentable
It is up to the entrepreneur to choose whether to protect its invention with a patent or using it as know-how. In the first case, the exclusivity is guaranteed for the entire duration of the patent. In the second, the invention is subject to the condition to keep the secret in the time.
According to a part of the doctrine, the know-how is the instrument safeguarding the practical knowledge integrating and accompanying the patent. Patenting represents an arrival point for research only after tests, analysis, investigation with results that may fall into the definition of secret information. Therefore, a patent application could exclude data, information and details that could excessively limit the patent’s sphere of protection from the claims and from the drawings related to the invention. These data and pieces of information could be kept secret and act an important role in realizing the invention.
An important definition of the relation between know-how and patent was given during a judgement of the Court of Turin in 2008. In this judgement, the judges faced the case of a patent of a process where the owner complained of the misappropriation from a competitor of know-how developed by him, essential and necessary to the concrete use of the monopoly and defined as “a complex of experiences, teachings, knowledges acquired during the experimentation of the process itself. This means that that practical knowledge of the invention, even if non-patented, was essential to its concrete realization in the most efficient way and is to be thought as juridically protected” (Court of Turin April 18, 2008).
When choosing if protecting an invention as patent or as know-how, the entrepreneur should take into consideration the pro and cons of both. Below a table that resumes them all.
|Publication (no secrecy)||NO publication (secrecy)|
|Time Limited Protection||Protection NOT limited by time|
|Obstacle for following patents||Not an obstacle for following patents|
|Protection guaranteed for the duration of the patent||Secrecy required: a secret difficult to protect|
The choice of protecting information and data by a patent or a business secret depends on the industrial sector of the entrepreneur. The manufacture sector, for instance, is prone to know-how for the nature of the products itself and for their method of production. The protection as business secret is preferred in the sector where there is a rapid succession of inventions, as in the car racing sector or in motorcycling. In these sectors keeping the maximum secrecy of the invention is vital, and this secrecy is incompatible with the patent because its publication may benefit competitors.
Generally, the choice to protect an invention as secret constitutes the last resort which is adopted if the patent is not possible.