The client is a university spin-out based on physics research. They are now a fast-growing SME funded by venture capital.  

When the company formed, they obtained patent rights to their core invention, and   published in leading journals. In the first year of product development, it became clear that there were critical details in the production process that had not been disclosed in the patent applications and scientific publications.  

Dehns patent attorneys advised the client that patenting would not be the best form of IP protection for the details pertaining to the production process, but these details would be better managed and protected by trade secrets.  The trade secrets would then, along with the patents, become a part of the technology to be licensed to franchises.  

Dehns undertook the documentation of the trade secrets, following the necessary steps to meet the legal requirements for the trade secret to be recorded as an IP asset. Over the next ten years, the client’s IP portfolio was reviewed annually, ensuring the trade secrets maintained their alignment with the ongoing development of the technology and the coverage provided by the patents in the portfolio.   

Furthermore, the trade secrets recorded were crucial to the client when looking for investment. The trade secrets were listed in the due diligence reports, detailing their impact on the control of the technology, but without disclosing the secrets.  The trade secrets were also used as part of the client’s background IP in research collaboration. This approach secured control over how the knowledge contained within the trade secret could be shared with other parties, and ensured this knowledge would not become a part of the collaborating party’s own IP. 

Under Dehns guidance, the client has developed procedures for their R&D and franchising operations that include the management of trade secrets. In addition to this, the client has integrated trade secret management into their HR processes, which is especially necessary when onboarding new employees and managing employees leaving the business. As the client’s understanding of trade secrets has grown, they have expanded their trade secret portfolio to include commercial trade secrets, such as market insights. 

For this client, the mastering of technology-based trade secrets was critical in reducing risk and creating a lead time advantage over their competitors, ensuring the client’s technology and R&D developments could not be replicated. The addition of commercial trade secrets at the later stage also expanded the scope of their IP protection.  

Due to confidentiality, this case study has been compiled from real, anonymised cases.