Jorda on : Terminology Misconceptions

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After reciting the trade secret definitions, a word about nomenclature and terminology associated with the usage of the terms “know-how” and “trade secret” is quite germane to clear up semantic confusion. While the key requirement of a trade secret is secrecy, definitions of “know-how” are completely silent on secrecy as can be seen from the following definitions:

  • Know-how. The knowledge and skill required to do something correctly. (The American Heritage Dictionary, p.705)
  • Know-how. Information that enables one to accomplish a particular task or to operate a particular device or process. (J. Thomas McCarthy et al., McCarthy’s Desk Encyclopedia of Intellectual Property, p. 330 (3rd ed. 2004)).
  • Know-how is knowledge and experience of a technical, commercial, administrative, financial or other nature, which is practically applicable in the operation of an enterprise or the practice of a profession. (International Association for the Protection of Intellectual Property, Mexican Congress Resolution (1973)).

Thus “know-how” per se is not protectable as an intellectual property right. It acquires trade secret status only if it is secret, has economic value and measures are in place to secure its secrecy. Know-how is intellectual property, which becomes an intellectual property right upon qualifying as a trade secret, which is exactly like the relationship between an invention and a patent.

A juxtaposition of the intellectual property/intellectual property right relationships will elucidate this:

Intellectual Property    Intellectual Property Right
InventionPatent, Trade Secret
Know-how, InventionTrade Secret
Work of AuthorshipCopyright

Inventions and know-how as intellectual property turn into patents and trade secrets as intellectual property rights upon compliance with stringent legal preconditions.

Since we don’t speak of “inventions and patents” and “invention and patent licenses,” it is correspondingly inappropriate to refer to “know-how and trade secrets” and “know-how and trade secret licenses.” “Proprietary know-how” is a possible but not ideal synonym for a “trade secret,” as it may not include inventions when protected under the trade secret regime.

If Patents, Trade Secrets, Trademarks and Copyrights are “intellectual property,” as some contend, then the question arises what are Inventions, Know-How, Brandnames and Works of Authorship. Usage of terms like “products of the mind” or “intellectual assets,” as has been suggested, would be difficult to popularize. Besides the term “intellectual asset” is already and confusingly used for Patents, Trade Secrets, Trademarks and Copyrights.

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This page contains a single entry by Jon Cavicchi published on October 8, 2007 8:00 AM.

Jorda on : What is and What is not a Trade Secret was the previous entry in this blog.

Jorda on: Trade Secrets are Not Secrets is the next entry in this blog.

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