Legal protection of know-how

What is know-how?

Know-how is not defined in the Czech legal system as the practice has shown that any definition of this concept that would establish it precisely would always lead to undesirable limitations of the legal protection of know-how.

In practice, the most widely used definition of know-how can be found in Commission Regulation (EU) No. 330/2010 of 20 April 2010 on the application of Article 101(3) of the Treaty on the Functioning of the European Union to categories of vertical agreements and concerted practices (hereinafter the “Regulation”), which classifies know-how as an intellectual property right together with industrial property rights, copyright and neighbouring rights.

According to the Regulation, know-how means a package of non-patented manufacturing, technical, commercial and other substantial and identified experience and knowledge that is neither known nor generally available and therefore secret, and such experience and knowledge provide at least a potential competitive advantage on the market for its owner or another authorised person. It may include, for example, various inventions that would not succeed in patent proceedings, recipes, designs, etc.

Use of know-how

The legal protection of know-how is characterised by the fact that this intellectual property right can only be exercised by its owner. The owner may then allow another person to use the know-how under pre-defined conditions, for example, under a licence agreement. When negotiating a licence agreement, it is always advisable to define precisely the subject-matter of the know-how in order to avoid possible future disputes between the parties.  

Registration and legal protection of know-how

Know-how cannot be registered per se. However, companies may have know-how in the form of a trade name, slogan/motto, company logo, product or packaging design or service mark. All these elements of commercial know-how can be protected from misuse by registering a trademark, either in the Czech Republic, the EU or worldwide.

Know-how may also become part of a trade secret, which is defined in Section 504 of the Civil Code. If someone discloses, makes available or uses a trade secret without authorisation for himself or another, he commits an act of unfair competition pursuant to the Civil Code and Act No. 221/2006 Sb., on the enforcement of industrial property rights and protection of trade secrets, as amended. In this situation, the owner of the trade secret may then pursue his claims in court, where he may seek reasonable compensation, damages or recovery of unjust enrichment.

The legal protection of know-how is largely incumbent on the owner, who must actively seek to prevent its disclosure. Therefore, the owner should identify the trade secret in detail, have it valued and set up a procedure within the company on how its contents will be kept secret.

If necessary, we are ready to help you with all the aspects of legal protection and use of know-how.

What situations do we typically handle for our clients regarding the legal protection of know-how?

• How to define know-how
• Registration of know-how
• Who can exercise know-how rights
• Licence agreement for the transfer of the right to use know-how
• Definition of the subject-matter of the know-how
• Disclosure of trade secrets
• Valuation of trade secrets and know-how
• How to sell your own know-how
• Protection of know-how from competitors
• Protection of know-how from employees
• Analysis of confidentiality agreements
• Protection of manufacturing processes, instructions or recipes