Patents, designs and trade secrets: protecting what your plant knows how to do
Nextica Law & Tax protects an industrial company's intangible asset, which is almost never a brand: patents and utility models on product and process, industrial designs, and above all trade secrets —the machine setting, the material breakdown, the process nobody has written down—, with confidentiality agreements with tooling suppliers and with customers who ask for the drawing, ownership clauses in joint R&D contracts, and action against copying and against the employee who walks off with the know-how.
A factory's most valuable asset is almost never registered: it lives in three people's heads and in an unprotected file.
What's included
1. Inventorying the plant's real intangible asset
what it knows how to do, who knows it and where it is written down, if it is.
2. Deciding between patenting and trade secret protection, depending on whether the invention can be read off the product or lives in the process.
3. Filing patents and utility models for product and process, and industrial designs where the shape is what sells.
4. Reasonable measures to protect the secret
limited access, traceability of who sees what, document marking and orderly staff departures.
5. Confidentiality agreements with tooling suppliers and with customers who ask for the drawing, with a specific purpose and a duration that outlives the contract.
6. Ownership clauses in joint R&D and third-party development contracts, written before work starts.
7. Acting against copying and against know-how leaks, with the evidence secured before anyone is warned.
A FACTORY'S MOST VALUABLE ASSET IS ALMOST NEVER REGISTERED
It lives in three people's heads and in an unprotected file, which is why it is lost without anyone signing anything.
Patenting what should have stayed secret
a patent grants a temporary monopoly in exchange for publishing everything. If the value lies in an internal process nobody can see from outside, publishing it means giving it away.
Trade secrets with no protective measures
a secret only exists if it is looked after —limited access, signed agreements and a record of who saw what. Without reasonable measures there is no secret to protect, however valuable the information.
Law 1/2019 on Trade SecretsA drawing emailed to the customer who is 'approving suppliers', with no prior agreement: in practice, industrial know-how leaks are rarely theft; they are an email sent perfectly casually to the wrong person with no paperwork behind it.
Frequently asked questions
Patent or trade secret?
It depends on whether the invention can be read off the product. A patent grants a temporary monopoly in exchange for publishing everything: if a competitor can take the part apart and work out how it was made, patenting protects you; if the value lies in an internal process nobody can see from outside —a temperature, an order of operations, a treatment— publishing it means giving it away, and trade secret protection works better and never expires. Trade secrets, though, only exist if they are looked after: reasonable protective measures, limited access, signed agreements and a record of who saw what.
A customer asks for the part drawing to 'approve suppliers'. Should I send it?
Send what they need for their approval process, not the full design, and always under an agreement signed before anything goes out: a specific purpose, a ban on manufacturing or having a third party manufacture using that information, return or destruction at the end, and a duration that outlives the contract. In practice, industrial know-how leaks are rarely theft: they are an email sent perfectly casually to the wrong person, with no paperwork behind it.
Cases we have worked on
- industria
Reestructuración de un grupo familiar sin conflicto
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