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Can YouCan YouKeep AKeep A

Secret?Secret?

Carmen G. PeraltaCarmen G. Peralta

DirectorDirector

Documentation Information & Technology Transfer BureauDocumentation Information & Technology Transfer Bureau

IP PhilippinesIP Philippines

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Trade Secret or Undisclosed Information:Trade Secret or Undisclosed Information:

Essential Component of BusinessEssential Component of BusinessCompetitive AdvantageCompetitive Advantage

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MaxsMaxs JollibeeJollibee

Kentucky FriedKentucky Fried

ChickenChicken

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Definition of Trade SecretDefinition of Trade Secret

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Trade Secret or KnowTrade Secret or Know--How: all theHow: all the

manufacturing knowledge written or oral,manufacturing knowledge written or oral,whether in the form ofwhether in the form of --

unprotected inventionsunprotected inventions

Formulas or RecipesFormulas or Recipes

Procedures orMethodsProcedures orMethods

Current or accumulated skills orCurrent or accumulated skills or

experienceexperience

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2. Natural and legal persons shall have the possibility of2. Natural and legal persons shall have the possibility of

preventing information lawfully within their control frompreventing information lawfully within their control from

being disclosed to, acquired by, or used by othersbeing disclosed to, acquired by, or used by others

without their consent in a manner contrary to honestwithout their consent in a manner contrary to honest

commercial practices so long as such information:commercial practices so long as such information:

(a) Is secret in the sense that it is not, as a body or(a) Is secret in the sense that it is not, as a body orin the precise configuration and assembly of itsin the precise configuration and assembly of its

components, generally known among or readilycomponents, generally known among or readily

accessible to persons within the circles thataccessible to persons within the circles that

normally deal with the kind of information innormally deal with the kind of information in

question;question;

(b) has commercial value because it is secret; and(b) has commercial value because it is secret; and

(c) has been subject to reasonable steps under the(c) has been subject to reasonable steps under the

circumstances to keep it secret, by the personcircumstances to keep it secret, by the person

lawfully in control of the information.lawfully in control of the information.

Section 7. Article 39 TRIPS Agreement (1994)Section 7. Article 39 TRIPS Agreement (1994)

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Licensee Licensor Activities

Video King, Inc. Viva Video

City, Inc.

Grant of a right to open and operate

a video sale and rental shop using

the Video City System which relates

to the method of selling or leasing to

members all original Home

Entertainment products

Examples of business agreements with KnowExamples of business agreements with Know--HowHow

or Trade Secret as componentor Trade Secret as component

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Nestle

Philippines, Inc.

Nestle

SA/Societe

des Produits

NestleSA/Nestec SA

Grant of an exclusive rights and

license to use the Trademarks, the

Patents and the know-how for the

manufacture, processing, control,packaging, marketing, distribution

and selling of stable dairy &

creamers, infant formula, soluble

coffees, produced beverages,

culinary products, ready-to-drinkbeverages, performance nutrition

roast & ground coffees, baby food

and healthy nutrition



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Wow Foods

Corporation

Cajun

Operating Co.

d/b/a

ChurchsChicken

Grant of a license to establish and

operate an aggregate of twenty-five

(25) Franchise Units and to use the

Church Chicken System andProprietary Marks. The System

pertains to the operation of the

Churchs Restaurant using the

Churchs and Churchs Chicken

mark. The Churchs System wasdeveloped in the USA and is known

for its fried chicken, fried okra,

coleslaw, mashed potato, jalapeno

peppers, French fries, corn on cob &

Honey Butter Biscuits.



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City Chix

Incorporated

Kentucy Fried

Chicken

International

Holdings, Inc.

Grant of licensee to use the

Kentucky Fried Chicken System

using specialized equipment and

method of marketing including, butnot limited to, distinctive building

designs, formulas, secret recipes,

business techniques, training

design, management information

systems, software packages,

advertising and materials pursuantto trade secrets, standards and

specifications & Franchisors

Standards of Operation Manual; and

the right to develop quick service

restaurants



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Patenting or Trade Secret?Patenting or Trade Secret?

An Important Business DecisionAn Important Business Decision

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Laws/Treaty ProtectingLaws/Treaty Protecting

Trade SecretsTrade Secrets

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1. In the course of ensuring effective1. In the course of ensuring effective

protection against unfair competition asprotection against unfair competition as

provided in Article 10provided in Article 10bisbis of the Parisof the Paris

Convention (1967), Members shall protectConvention (1967), Members shall protectundisclosed information in accordance withundisclosed information in accordance with

paragraph 2 and data submitted toparagraph 2 and data submitted to

governments or governmental agencies ingovernments or governmental agencies in

accordance with paragraph 3accordance with paragraph 3

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3. Members, when requiring, as a condition of3. Members, when requiring, as a condition ofapproving the marketing of pharmaceuticalapproving the marketing of pharmaceutical

or of agricultural chemical products whichor of agricultural chemical products which

utilize new chemical entities, the submissionutilize new chemical entities, the submission

of undisclosed test or other data, theof undisclosed test or other data, theorigination of which involves a considerableorigination of which involves a considerable

effort, shall protect such data against unfaireffort, shall protect such data against unfair

commercial use. In addition,Members shallcommercial use. In addition,Members shall

protect such data against disclosure, exceptprotect such data against disclosure, exceptwhere necessary to protect the public, orwhere necessary to protect the public, or

unless steps are taken to ensure that theunless steps are taken to ensure that the

data protected against unfair commercialdata protected against unfair commercial

use.use.


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Implementing Rules & Regulations ofImplementing Rules & Regulations of

Sections 87 and 88 of the IP CodeSections 87 and 88 of the IP Code

Adopted the TRIPS AgreementAdopted the TRIPS Agreement

Definition of Undisclosed InformationDefinition of Undisclosed Information

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Electronic Commerce Act (RA 8792)Electronic Commerce Act (RA 8792)

June 14 (2000)June 14 (2000)

Section 31. Lawful AccessSection 31. Lawful Access Access to anAccess to an

electronic file, or an electronic signature of anelectronic file, or an electronic signature of an

electronic data message or electronic documentelectronic data message or electronic documentshall only be authorized and enforced in favor ofshall only be authorized and enforced in favor of

the individual or entity having a legal right to thethe individual or entity having a legal right to the

possession or the use of the plaintext, electronicpossession or the use of the plaintext, electronic

signature or file and solely for the authorizedsignature or file and solely for the authorizedpurposes.purposes.

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Electronic Commerce Act (RA 8792)Electronic Commerce Act (RA 8792)

Section 32. Obligation of ConfidentialitySection 32. Obligation of Confidentiality AnyAny

person who obtained access to any electronicperson who obtained access to any electronic

key, electronic data message or electronickey, electronic data message or electronic

document, book, register, correspondence,document, book, register, correspondence,information, or other material pursuant to anyinformation, or other material pursuant to any

powers conferred under this Act, shall notpowers conferred under this Act, shall not

convey to or share the same with any otherconvey to or share the same with any other

person.person.

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Information Submitted toInformation Submitted to

Government or its InstrumentalitiesGovernment or its Instrumentalities

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Revised Penal Code (RA 3815) (Dec. 8, 1930)Revised Penal Code (RA 3815) (Dec. 8, 1930)

Article 292. Revelation of IndustrialArticle 292. Revelation of Industrial

SecretsSecrets -- The penalty of prisinThe penalty of prisin

correccional in its minimum and mediumcorreccional in its minimum and medium

periods and a fine not exceeding 500periods and a fine not exceeding 500pesos shall be imposed upon the personpesos shall be imposed upon the person

in charge, employee or workman of anyin charge, employee or workman of any

manufacturing or industrial establishmentmanufacturing or industrial establishment

who, to the prejudice of the owner thereof,who, to the prejudice of the owner thereof,shall reveal the secrets of the industry ofshall reveal the secrets of the industry of

the latter.the latter.

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AntiAnti--Graft and Corrupt Practices Act (RA 3019)Graft and Corrupt Practices Act (RA 3019)

(Aug. 17, 1960)(Aug. 17, 1960)

Section 3(k) Divulging valuableSection 3(k) Divulging valuable

information of a confidential character,information of a confidential character,

acquired by his office or by him onacquired by his office or by him onaccount of his official position toaccount of his official position to

unauthorized persons, or releasing suchunauthorized persons, or releasing such

information in advance of its authorizedinformation in advance of its authorized

release date.release date.

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Thank YouThank You

www.ipophil.gov.phwww.ipophil.gov.ph

Nestle - Zaka (15)

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