The (trade) secret of success

We have all heard of success stories such as the Coca-Cola recipe and the Google search algorithm. Many companies value their trade secrets and consider them important for competitiveness and innovative performance.

Although the general understanding is that trade secrets are good for business, there seem to be many incorrect assumptions about their legal protection.

For example, some are under the impression that any own technical or commercial information may be a trade secret, whether kept confidential or not. Others assume that the protection provides exclusive rights that could be invoked against any third party using the information, irrespective of how the information was actually obtained by the third party. Some also take for granted that specific provisions on trade secret protection are in place globally.

Especially Swedish companies may be faced with an unwelcome surprise when realizing the lack of explicit protection in countries where their international business partners operate. In particular when information has already been disclosed without the parties having discussed the delicate nature of the information or a confidentiality agreement.

The fragmented international protection combined with an increase in trade secret theft is an issue that has been recognized by the European Commission. In November last year, a draft directive to harmonize the protection of trade secrets in the EU was presented.

The draft introduces a common definition of trade secrets as well as civil sanctions against misuse. It will surely have a positive effect on cross-border cooperation between business and research partners within the EU, if and when enacted.

As many aspects of the draft text correspond to Swedish legislation, companies that have already introduced a policy and procedure for managing their trade secrets under the Swedish Trade Secrets Act will benefit when it is time to enjoy EU-wide protection of their valuable information.

In the meantime I wish to remind you all that sometimes, silence is golden.

Anita Gillior, Attorney at Law

To hear more on trade secrets you are welcome to our breakfast seminar in Stockholm on April 28. More information and registration (in Swedish)

Fighting the bad guys with customs surveillance

Most classic feel-good Hollywood movies reach a point when things look most bleak, and you almost doubt whether the hero will defy all odds and beat the villain.

The eternal fight against counterfeiting is starting to reach a similar point. As IP specialists and larger companies are aware, one of the most effective remedies in this battle is the cooperation with and help from EU national customs authorities, which offer the free service of monitoring the borders and detaining suspicious consignments being imported from countries outside of EU.

In 2012 EU Customs detained more than 40 million items of fake goods worth approximately EUR 1 billion. However, it is estimated that this only equals around 1% of the total number of counterfeit goods being imported into the EU. Surely, things do not look good for our hero.

When facing the impossible in the world of movies, the average hero typically regroups, changes strategy and returns even stronger.

A similar strategy is being employed by the legislators fighting on behalf of all right holders in this aspect. Accordingly, a new Customs Regulation has come into force on 1st of January 2014 with the aim of streamlining the process and extending customs’ authorities to also include possible infringement of trade names and utility models. The new regulation also introduces a new procedure for small consignments containing 3 or less units, whereby these can be handled by customs themselves and destroyed without contacting the rights holder. Especially the latter part will help right holders in their endeavor as it will limit the costs for the smaller insignificant matters and thereby help both parties focus on the larger consignments.

Furthermore, a major key to successful customs surveillance is for the right holders to provide customs with as much information as possible regarding their authentic products, including the place of production, shipping routes, packaging, distributors, countries of distribution and details of the products. Therefore, the new regulation also introduces a centralized database where all information is shared between the right holders and customs authorities.

Whether this new regulation will make for a happy ending remains to be seen. However, as long as there are customers, the producers of counterfeit products will continue to emerge. Therefore, it is evidently that the many arguments against the strict customs rules due to the protection of the unaware consumers are slowly silenced as the most effective way to fight “the bad guys” seems to be to deter customers from buying such products. This is probably also the reason why the European Court of Justice has recently allowed for the destruction of consignments being purchased for private use.

At Awapatent we stride to help right holders make their customs surveillance more effective and realize that cooperation and sharing of information with customs authorities are key elements in this fight. Counterfeiters also change strategy and are constantly developing their illegal methods and pirated products. Accordingly, the fight continues.

To stay in the movie analogy, the obvious movie comparison is “The Never Ending Story”.

Anders Michael Poulsen, Attorney at Law

The procedure up to grant

In March 2011, I submitted my application to Awapatent. I received a confirmation from the HR department acknowledging a date of filing. I had fulfilled the basic requirements: a) an indication of the subject-matter  the position – sought, b) a statement of my name and address allowing them to contact me, and c) a description of myself.

As a date of filing was accorded, the examination with regard to formal requirements started. Did I speak the required and preferred languages? Had I included all necessary information in my application? Did the content of the application actually originate in me? Did I claim priority in any kind of way? Was I situated in the relevant geographical area and available for an interview?

As the formal requirements were fulfilled, I was passed from the Receiving Section to the Search Division. From being mainly dealt with by the HR department, I was now accepted to meet my colleagues at my home office.

The search – the trainee period – was initiated. Theoretical weeks were mixed with practical work. The theoretical weeks were like assessing novelty: black or white, yes or no, right or wrong. The practical work was rather like assessing inventive step: a greyscale, maybe, it depends. I went from dealing with the words patent and intellectual property rights as abstract terms to slowly putting them in a structure and in relation to the known art.

In April 2012, it was time to get known to the crowd. I was no longer a trainee with limited capacity, but an associate fighting on the same conditions as all other employees with full capacity. It was time to face my strengths and weaknesses, to combat for my survival in the public domain, and to be substantively examined during several years. Thus, I was forwarded from the Search Division to the Examining Division.

Since September 2013, we are about 10 colleagues struggling monthly with the European Patent Convention preparing to pass the European Qualifying Examination. It is a tough examination preferably resulting in a grant and the professional title of European Patent Attorney. Recently we met in Malmö for the sixth session of preparation, and received another ”communication” indicating which parts each of us still has to improve before the mention of grant.

To pass the European Qualifying Examination is a great goal, but for a patent attorney, as for a patent application, the procedure up to grant is only the very start of a long and exciting journey.

Ingela Svanäng, Associate