I embarked on this post with trepidation. It’s always worrying when you start out thinking that you have a problem and that you disagree with IP Draughts. The problem involves know-how: how should you deal with it, when it is part of the output of a research project?
Many research projects produce identifiable and protectable IP. There may be negotiations over who should own that IP, and the law gives us a set of rules that explain who is the first owner if different terms are not agreed.
But research projects also produce interesting things that are not obviously classified as identifiable and protectable IP – the ill-defined stuff that is sometimes called ‘know-how’. Partners in the research want (demand, in some cases) rights to continue to use the know-how or to stop other people from using it. Research funders want to own it as an output of the research. IP Draughts says it is not something that can be assigned. [Don't take any notice of his maunderings. Ed.]
Two examples of know-how occupy my world:
Results – actual hard data. As explained elsewhere, there is no property in information itself. If it is to be protected, it needs to be covered by confidentiality or fixed as an acknowledged piece of IP. It could be recorded as a copyright work or entered into a database. But that approach doesn’t really deal with the whole problem. The copyright owner can prevent the copyright work from being copied without permission but the data probably also exists outside of the copyright work (eg the difference between a publication and the data it is based on). As for databases, it is the database, and the investment in creating the database, that is protected by database right and not the data itself. Database right gives the owner of the database the right to control the use of the database rather than the content of the database. Neither protects the data itself. Conclusion: confidentiality is the best bet to protect the data.
Methods – specifically, refinements to established surgical methods that arise in the course of clinical trials. Again, there is no property in the information itself. Patenting is unlikely to be the answer (cost, difficulty in demonstrating novelty, exclusion of certain methods from patent protection). Copyright offers some hope but the same arguments apply. Conclusion (again): if the method is to be protected at all, confidentiality is the best bet.
The researcher will want to be able to continue to use the know-how. The funder, stereotypically, will want to protect, restrict and commercialise. And so we turn to the law to find out who owns the know-how and who can control it and, potentially, how to transfer it.
We know that know-how is practical information that is secret, substantial and identified (EU Tech Transfer Reg (772/2004)) and we know that know-how is not property and cannot be assigned (IP Draughts commentaries).
English law protects trade secrets but will not protect know-how of itself (Faccenda Chicken). Know-how is treated as a lesser being than a trade secret and needs to shelter behind confidentiality. The EU is currently considering a draft Directive introducing specific protections for trade secrets (EU draft Dir 2013/0402) that would impose penalties for the unlawful acquisition, disclosure or use of trade secrets. A trade secret is defined as information that is secret, has commercial value because it is secret and has been the subject of reasonable steps to keep it secret. On that definition, know-how might amount to a trade secret in some cases. But again we see that confidentiality is key. We also see a requirement for that confidentiality to protect a commercial value.
So, it looks like the answer to my problem is that no one really owns know-how, although you can expect to control it if you have the benefit of a confidentiality obligation that covers it. There might be property in related IP rights but my sense is that these IP rights will often not catch the guts of the know-how – the data or the method. Phew, I agree with IP Draughts.
And the lessons for our researcher? Read the definitions in the research agreement and read them carefully. Then see where and how those definitions are used. If know-how is referred to in the definition of Confidential Information and the funder controls the Confidential Information, the researcher’s right to use their general know-how may be restricted. If the definition of Intellectual Property includes data or methods, we may have ‘category confusion’ particularly if that data and those methods are not protected by any recognised form of IP.
A good (?) example of this is the EU’s Horizon 20/20 programme, whose contract terms define Background as follows:
‘Background’ means any data, know-how or information — whatever its form or nature (tangible or intangible), including any rights such as intellectual property rights — that: (a) is held by the beneficiaries before they acceded to the Agreement, and (b) is needed to implement the action or exploit the results.
Faced with a definition like this, which mixes up know-how, information and IP rights, you need to look very carefully at where the defined term is used and how it affects you.