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Licensing agreements: Protecting trade secrets

Andrea Allan and Sean McGuire of Watermark examine some recent court cases involving trade secrets and confidential information

Exclusive technology licence agreements, particularly those for pharmaceuticals, commonly include trade secrets and confidential information within the relevant definition of the licensed IP. This is because it is often necessary for the exclusive licensee to have the confidential information in order to fully exploit the technology, particularly where that information concerns manufacturing know-how and other methodologies used for developing, testing, or analysing the products being produced under the licence.

The recent Supreme Court of New South Wales decision of Painaway Australia Pty Ltd v JAKL Group & Ors [NSWSC 205 2011] reinforces the importance of how to properly license and assign exclusive rights to use trade secrets and confidential information. Painaway was granted an exclusive licence to use trade marks and confidential formulas to make, market, distribute and sell pharmaceutical products. The enforceability of the licence was challenged but ultimately upheld, despite some of the corporate parties to the licence...

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