Expertise/Intellectual Property

Service

Trade Secret Regimes and Know-How

A trade secret regime is established for information that is valuable to a company as long as outsiders do not know it. Know-how is described and documented so that it can be transferred to another person and used in business.

We are most often instructed by:

  • Companies whose value lies in technologies, recipes and customer databases
  • Employers facing an employee's move to a competitor or a leak of information
  • Holders of know-how and those to whom it is transferred

The information on this website is provided for information purposes only and does not constitute a public offer.

What the Service Includes

Timing and Fees
–timing on request
from ₽fee on request

Timing and fees are indicative and are confirmed when the engagement is agreed.

01 / Overview
What the regime provides

A “confidential” marking does not in itself create protection: the regime is deemed established only once all the measures specified by law have been taken, from the list of information to the legend on media.

Whether the regime is actually maintained is tested when an employee leaves for a competitor or a leak is discovered. Recovery of damages, dismissal for disclosure and proof that the information was protected rely on documents drawn up before the leak. Regulations without actual working practice do not provide such a basis.

Know-how is protected for as long as the information remains confidential. State registration of know-how is not required.

For a transaction involving know-how, the information concerned is described and recorded as at a specific date: without a description, the parties cannot establish what exactly has been transferred.

An investor or a buyer of a company checks whether a regime has been introduced, whether the scope of the information has been defined and whether employees and contractors are bound by obligations. A technology that is not described anywhere and not protected in any way may leave the company together with its people.

02 / Outcome
Service Outcome
  • Opinion on the existing regimeAn assessment of the existing documents and practice of access to information, with a list of missing measures.
  • Regime documentsTrade secret regulations, a list of protected information, an order establishing the regime and forms for recording persons granted access.
  • Documents for employeesAcknowledgement forms, employment contract terms and non-disclosure undertakings.
  • Description of know-howA description of the information as at the date of recording, and documents for the transfer of the right.
  • Materials in the event of a breachThe recorded circumstances of the disclosure and claims against the infringer.

The outcome of the service is the work performed within the scope agreed with the client.

03 / Preparation
What the work is built on

  1. Materials

    The work is built on the company's documents and information; the following points are relevant.

    • InformationWhich technologies, databases and metrics are valuable and where they are stored.
    • Existing documentsRegulations, orders and employment contracts, if any.
    • People with accessDepartments and employees who need the information for their work.
    • CounterpartiesTo whom the information has already been passed and on what terms.
    • LeakA report of the disclosure as soon as it is discovered.

  2. Assessment

    On the basis of the materials, the risks, the possible solutions and their consequences are identified.

  3. Plan

    For the chosen option, a plan is drawn up: the sequence of steps, timing and scope of work.

04 / Projects
Selected Projects
01 / 04

Acting for the buyer

Intellectual property rights in the acquisition of an equipment and digital solutions manufacturer

Challenge

The buyer was acquiring shares in a foreign company that owned a Russian manufacturer of industrial equipment and digital solutions for equipment management and monitoring, as well as shares in a Russian legal entity. The acquisition of the foreign company was governed by English law.

What was done

The comprehensive legal due diligence of the Russian business covered intellectual property rights, as well as the corporate history, business operations, contractual relationships and other matters material to the transaction. The foreign ownership structure, title to the shares being acquired and the legal aspects of the buyer's entry into the existing corporate structure were analysed separately.

The structure and documents of the transaction were agreed. The findings on the Russian and foreign parts of the structure were reflected in the terms of the transaction and the arrangements for its closing.

Preparing for franchising

Consolidation of rights to a group's accounts, websites and materials before franchising

Challenge

A group of companies was engaged in extensive marketing, but its accounts, websites and rights to the materials created were registered in the names of different entities within the group. To set up franchises later, the rights had to be brought together in the group's management company.

What was done

It was established which group entity held each asset, and the transfer of rights to the management company was documented. The rights to the group's marketing assets were put in order and consolidated in the hands of a single entity.

Trademark dispute

Non-use dispute over a trademark that blocked registration of the client's mark

Challenge

The client needed to register a trademark to brand the services of a travel agency. Registration was blocked by another company's mark: that company used it for a cosmetics brand, but the protection of the mark also extended to a number of Nice classes the client needed.

What was done

Claims for early termination of the legal protection of the mark for non-use were prepared in respect of those classes. The claims were put to the rights holder at the pre-trial stage, and the dispute was settled without going to court.

Purchase of an interest

Review of an app developer's intellectual property rights

Challenge

The buyer was acquiring an interest in a company developing a healthy lifestyle app with a weekly audience of more than 1.5 million users worldwide. Comprehensive legal due diligence of the business being acquired was a key part of the engagement.

What was done

The company's intellectual property rights were analysed, as well as its corporate history, business operations and employment relationships. The due diligence findings were taken into account in structuring the transaction and preparing the contractual documentation.

05 / Questions
Frequently Asked Questions

First, it is established what information the employee had, whether they signed to acknowledge the list and what evidence there is of the use. Where a regime has been established, the employer brings claims against the former employee and against those using the information to stop the use and to recover damages. A clause in an employment contract prohibiting work for a competitor has no legal effect, but the obligation not to disclose the information continues after the employment ends.

The documents are checked against actual practice and any missing measures are taken, so that the regime can be relied on if a disclosure occurs.

Information passed to a contractor or a party to negotiations is additionally protected by contract: a confidentiality agreement defines the purpose of use, the range of recipients and the duration of the obligations.

An hourly rate, a fixed fee or a combined model is used; in some cases part of the fee depends on the outcome achieved. The fee is determined by the time actually spent, the complexity of the matter and the overall timeframe of the project, and is agreed before work begins.

Key Contacts
Deni Murdalov Deni Murdalov Partner, PhD (Law), LL.M. Ilya Smirnov Ilya Smirnov Partner

Request a free consultation

Describe your matter and the circumstances in which it arose. The consultation establishes the possible structure of the work and the scope of legal support required.

Email us
Other Services in This Practice
Trademarks Protection and Disputes Brand Transactions Licence Agreements Franchising Assignment of Exclusive Rights Computer Programs and Databases Account Disputes Domain Name Disputes Madrid System Inventions Utility Models Industrial Designs Documents and Consultations

Discuss your matter

Describe your situation and we will reply within 24 hours.

Discuss your matter

Describe your situation and we will reply within 24 hours.

Request sent

We will contact you within 24 hours