Since ancient times, furniture has been a necessary item in everyday life and not only reflected the status of its owners, but also the aesthetic features of the country of their residence. The products of masters of past centuries amaze with the sophistication and complexity of their compositions, and some of the technologies for their production have not yet been revealed. Currently, know-how in the furniture industry is also mainly related to technology (for example, innovative methods of processing materials, which reduces the number of defects, or the use of 3D printing, which speeds up the production process and allows the creation of complex furniture elements) and in order to preserve them, it is important to know how to ensure their protection. (Article 1465 of the Civil Code of the Russian Federation).
Official information about a business is not a trade secret (for example, TIN, OGRN and OGRNIP, the text of the charter, the date of registration of the business or its owners, the name of the director, types of licenses, etc. - Article 5 of the Law on Trade Secrets), as well as an unrealized business idea.
Business secrets are not always unique and often relate to accumulated experience. For example, to create a technology or instructions for the manufacture of furniture samples, information of any nature (production, technical, etc.) may include information about the results of intellectual activity in the company, about methods of carrying out professional activities that have real or potential commercial value due to their unknownness to third parties who do not have access to this information on a legal basis. However, the owner of this confidential information must ensure security measures for it by introducing a trade secret regime or otherwise. At the same time, the source of legal regulation is the Civil Code of the Russian Federation and Federal Law No. 98 “On Trade Secrets”.
A production secret, as an object of intellectual property, can be used in any way that does not contradict the law in your business (for example, sell it, issue licenses to an interested party for the right to use it, or make it as a contribution to cooperation with another entrepreneur under a joint venture agreement).
Know-how can be transferred under contracts for the alienation of exclusive rights or under licensing agreements, franchising agreements.
Under an alienation agreement, know-how is sold once, and after the sale, the entrepreneur-seller is obliged to keep the know-how secret for the buyer - otherwise the seller will be considered a violator (Article 1468 of the Civil Code of the Russian Federation). A special feature of the contract for the alienation of the exclusive right to a production secret is the fact that the right holder transfers it in full to the other party.
Sale of a license for a production secret is possible both individually and as part of a franchise package: brand + know-how.
When concluding a license agreement, the holder of the exclusive right to a production secret (licensor) grants or undertakes to provide the other party (licensee) with the right to use the corresponding production secret within the limits established by the agreement. At the same time, the acquirer of know-how under a license agreement must maintain the confidentiality of the production secret not only during the entire period of use of the exclusive right, but also after its termination. A license agreement, as a rule. concluded with an indication of the validity period. If the validity period is not specified, then either party has the right to withdraw from the contract at any time by notifying the other party at least six months in advance, unless the contract provides for a different period.
When concluding a commercial concession agreement (franchise), the copyright holder undertakes to provide the other party (user), for a fee for a period or without specifying a period, the right to use the exclusive right to a production secret (know-how) in his business. In this case, the copyright holder must comply with the trade secret regime for the production secret and have documents confirming that the information is secret. In a franchise agreement, it is important to provide for provisions governing the establishment of a trade secret regime by the user (franchisee) in order to prevent information leakage, as well as to establish responsibility for the disclosure of information constituting a production secret and methods of control on the part of the franchisor (know-how owner).
Thus, the main feature of such agreements is the obligation of the parties to maintain the confidentiality of the trade secret until the termination of the exclusive right to it.
There is another reliable way to protect know-how - deposition. Its owner can upload a file with secret information into a digital cell protected by blockchain technology, the contents of which are accessible only to the person who deposited this information using a special electronic key. The received certificate of deposit will confirm that the secret belongs to this person and can be a powerful argument as evidence of violation of the exclusive right to know-how in court.
It should be added that the loss of confidentiality of a trade secret will revoke the ability to sell and license it.
One of the disadvantages of storing information, for example, on a unique technology, as know-how is the complete coincidence of its content with that of a competitor who created a similar technology based on its experience. In this case, he acquires an independent exclusive right to this production secret, without violating the exclusive right of its other owners (Article 1466 of the Civil Code of the Russian Federation).
If an employee created a production secret as part of his job duties, then the exclusive right to it will belong to the employer. And if the know-how was created by an outside specialist for hire, then it is important to indicate in the contract that the exclusive right to the secret passes to the customer, otherwise it will remain with the freelancer (Article 1471 of the Civil Code of the Russian Federation).
When concluding an agreement on the transfer of rights to a trade secret, it should indicate the conditions for maintaining confidentiality for all parties and provide documents confirming the rights and obligations of all persons involved in the trade secret. The agreement must include provisions on confidentiality and non-disclosure of information about know-how after the transfer of rights and information on liability for violation of the terms of the agreement, as well as specify the procedure for providing access to know-how (when, on what media, in what form, etc.), indicate the amount of remuneration, the payment procedure and the conditions for terminating the agreement upon disclosure of secret information.
One way to keep information secret is to establish a trade secret regime within the organization. To do this, it is important to determine what information will be a trade secret, close access to electronic documents, and put secret information on paper in a safe and mark it with the stamp “Trade Secret” indicating the name and address of the owner. The documents must indicate the procedure for employees and contractors to access trade secrets (include a clause in the non-disclosure agreement, access to information under a receipt of responsibility, keep records of persons who have gained access to the secret).
When working with counterparties, contract or service agreements also include a clause on non-disclosure of confidential information and indicate the extent of responsibility for both parties.
If this regime is followed, the exclusive right to a trade secret will be valid indefinitely until the information becomes known to third parties.
Know-how can be stored without creating a trade secret regime (clause 144 of the Resolution of the Plenum of the Supreme Court of the Russian Federation of April 23, 2019 No. 10), by including a non-disclosure clause in the employment contract with the employee and specifying the amount of the fine in case he tries to take the secret for competitors upon dismissal or use it in his business. For using know-how without a license, you can file a complaint against a former employee with the antimonopoly service. In this case, the violator is sent an order to stop unfair competition and may be subject to a fine (Article 14.33 of the Administrative Code of the Russian Federation), and in some cases, a person who obtained documents illegally and used know-how in his business may be subject to criminal prosecution under Art. 183 of the Criminal Code of the Russian Federation.
However, a specialist who did not know and/or should not have known that he was using a trade secret and that this use was illegal, or who gained access to a trade secret by accident or mistake, will not be held liable.
In conclusion, I would like to note that any person who disclosed information constituting a production secret, including a public legal entity (RF, subject R, municipal entity), can be held liable for violation of the exclusive right to a trade secret, if such information was disclosed.
