I.1-) Generalities of Know How
Even though from this very moment we could already enter into a conflict over the definition that I will give about the know-how and the names by which it is recognized in commercial traffic, I will run the general risk that we always assume when issuing concepts.
Know how, an abbreviated expression of the English phrase "to know how to do it", which means "to know how to do something", includes tangible components (drawings, engravings, diagrams, machinery, brochures with revealing instructions for a certain process manufacturing or assembly) and intangibles (knowledge, organizational and operational skills, which are represented only in human material, and which are known as show-how). In this case, only tangible items are considered property for the company, since the rest are taken by the worker with him wherever he goes.
In this sense, know-how could be conceptualized as that set of data, information and / or knowledge; methods, procedures, techniques or combination of these, with novelty, utility and value, not patented, that are not known to the public or easily accessible by specialized personnel, which are used in business activity, providing competitive advantages and excellence in the market.
Know-how, as a term, has other names by which it is known and identified and that, although it is outside this material to question the certainty of each of them, it is necessary at least to state them to use some of those terms interchangeably and do not fall into annoying repetitions. Thus, the TRIPS Agreement, for example, in its Article 39 recognizes them as "undisclosed information", while the Mexican Industrial Property Law in its Third Title designates them as "industrial secrets".
Know-how provides its legal holder, at least in principle, with exclusivity and excellence in the market, whether in production, service provision or marketing. That is why it is considered an intangible asset of great strength, reaching in most cases to report greater advantages than a patent. In this sense, a dilemma arises that must be carefully analyzed in each organization: patent or keep the secret.
The right conclusion can be reached after carrying out several activities that include, among others, a detailed search for patents and updating of the state of the art, as well as taking into account the characteristics of the new obtaining or technology, its state of maturity; since sometimes it is decided to keep the information about the new variety secret, even when it meets the requirements in lege to protect it by patent, due to the advantages it would represent, while in other cases it is almost forced because it does not meet the patentability requirements.
This issue is dealt with within Section XVII of the General Bases of Business Improvement, when in its numeral 17.1.1 "The Industrial Property of Products and Services offered by the Company" when it instructs organizations in improvement so that before protecting by patent, take into account the alternative route of secrecy.
It is necessary to clarify at this time, or at least report, on an aspect that could be confusing in the practical order because it is difficult to define both terms in most cases. It's about technical assistance and know-how.
The value of the transfer of know-how consists in the possession, management and use of data and information that, if used in the way that is stamped in the agreement, will place the user in a favorable competitive position. Meanwhile, the value of technical assistance is that the provider has experience in using comprehensive technical and related information, which may be generally known or fully available to the public.
In this sense, when a machinery for the production of a specific article is transferred, the knowledge related to the assembly of its parts can be obtained from a company dedicated to the assembly of industrial equipment with experience in the activity. That is technical assistance. But the manufacturing method to make it more efficient may be closely guarded information that will only be known through a know-how license.
In terms of know-how, certain questions are also raised regarding its ownership, the forms of transmission and the actions that its holder may exercise to demand compensation for damages caused by third parties.
Unlike the other forms of industrial property, such as patents and trademarks, the substantive law does not recognize exclusively opposable rights erga omnes over the holder of a know-how, however, it does distinguish between a situation of fact and the right of the person who transmits the know-how to demand the maintenance of its confidentiality, among other elements that are agreed in the agreement. Note that when a third party obtains through lawful procedures what an organization guards as an industrial secret, (the third party) cannot be prevented from using it, while if that third party were to disclose or obtain by illegal means a know-how in possession of an organization, or violates a license agreement, if you could be sued for acts of unfair competition or violation of contract,according to most national laws.
Know-how, in inter vivos acts, is generally transmitted by licensing agreements, either mixed (with patents, trademarks or technical assistance) or pure (know-how only), motivated by the intangible nature of that asset (as well as the other forms of industrial property) that allow its use in different places by different people.
Here are some considerations about licensing agreements, which could be taken into account at the time of signing the agreement.
I.2-) Licenses as legal forms of transmission of Know How.
The term license comes from the Latin licere, which means "to allow", understanding then by know-how license that agreement by virtue of which one of the parties (licensor), authorizes another (licensee) to use, as agreed, a set of valuable, useful and innovative information and / or technical knowledge, not patented, kept confidential, allowing you to obtain competitive advantages.
Know-how licenses are based on the information and / or knowledge that the licensor possesses in secret, unlike patent licenses, in which the licensee is interested in acquiring rights to use the information published in the document patent.
That is why when the agreement is signed, it must be described in detail what the industrial secret consists of, the licensee being able to determine, above all if it is a mixed patent and know-how license agreement or if it belongs to the latter only, if it should have been described in a of the patents owned by the licensor. This element is extremely useful for the licensee, since national laws, such as Mexico's, and international agreements such as the TRIPS Agreement require that when applying for the patent in the Office, its owner describe "the best way" of its obtaining, therefore, no royalty should be paid for a know-how that, by law, should have been published in the corresponding patent.
However, there are elements that are not traditionally indicated in the body of the patent because it does not require it or because its owner does not communicate it, such as sources of raw materials, environmental conditions, sources of supply, organization of production, trademarks of The products used, among others that are those that provide the competitive advantages and excellence that other organizations seek, for which they are willing to pay, regardless of the fact that they can also agree to a patent license to access published information and consign confidentiality clauses so that the know-how is transmitted to them as a complement.
In know-how licenses, the licensor usually imposes on the licensee a series of obligations that include, among others:
- Non-exclusive use of know-how. The licensor retains the right to grant licenses to other interested parties, as well as to use it properly. The licensee may only use the know-how in the territories and for the activities provided for in the contract. The licensee may not grant sub-licenses. The licensee must undertake to keep the information provided under strict secrecy according to the agreed time. The licensee shall notify the licensor of improvements or improvements to the know-how before using it commercially. If you start to use it in the absence of the licensor, you will not be able to later complain about deficiencies in the results, since you have introduced a "foreign object", unknown to him.
This clause is common in Cuba, where there is an extraordinary human capital with a high technical scientific level, which makes it possible to obtain improvements on our part.
- The obligation to inform the licensor of the misuse of the know-how or request legal action against the alleged offenders. In the latter case, the licensor must have previously informed you who are authorized to use the confidential information.
Some know-how licensing agreements limit the duration of use of the information and secret knowledge granted to the duration of the contract. On this subject there are not a few contradictions and diverse criteria.
I understand that this condition would only be acceptable if the licensee deliberately causes the agreement to fail, and must be required to cease its use before the end of the agreed term for the duration of the license. In all other cases, the licensee is free to use the licensed know-how provided she does not disclose it and makes her lose her secrecy.
However, the problem of how to make the licensee forget in a few days what he learned in a long time would always be latent. In the United States and the countries of the European Economic Community, the licensee has been granted the right of the licensee to use the know-how provided once the agreement has been terminated by different court decisions.
Bibliography
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This situation becomes palpable in Research and Development (R&D) activities, or in interface work, when, for example, engineering work is carried out for industrial-scale production.
Cuban legislation, specifically Decree Law 68/83 "On Inventions, Scientific Discoveries, Industrial Models, Trademarks and Appellations of Origin", as well as international conventions such as the TRIPS Agreement and the Paris Convention, collect as patentable that invention that has novelty, inventive activity and industrial applicability, except in those matters and branches that the law expressly prohibits it.
EEC Regulation No. 556 of November 30, 1988 of the European Economic Community on Know-How licenses includes these obligations within the so-called white clauses as they are considered non-restrictive to competition and, therefore, admissible in this type of agreement.
It must not be forgotten that the exclusive rights to manufacture, use, sell, import and export are independent and the licensor can grant them without distinction if he so considers it.
