Medicinalvirksomheders hemmeligholdelse af fremgangsmådeopfindelser

Sofie Østerkjærhuus Ulstrup

Student thesis: Master thesis


The companies in the pharmaceutical industry invest vast sums in R&D and are therefore interested in protecting their inventions. A research paper from Cohen et al.1 shows that pharmaceutical companies primarily use secrecy to protect their process innovation. The trade secrets are protected in TRIPS article 39 (2). TRIPS article 50 provides a rule that requires the Member States to have prompt and effective provisional measures to prevent an infringement of the IP-rights and preserve relevant evidence. The latter is important when it comes to processes, as they might not be observable for other than the manufacturer. Therefore, an infringement can occur without the pharmaceutical company being able to prove it. Denmark and UK are both Member States, but will not necessarily have the same protection, as shown in this thesis. At the same time, other factors than the protection might influence the companies’ choice of process secrecy. Especially the risk of someone patenting the process can influence their choice. However, a case between Novo Nordisk A/S and CAYLA at EPO shows that a way to prevent this is by secretly disclosing the process, where others do not necessary see it. Another opportunity for the company is to patent the process later on, as secrecy does not prevent later patent protection. This thesis examines the protection of trade secrets and the provisional measures from TRIPS article 39(2) and 50 in Denmark and UK, and examines which other factors will influence the companies’ preferred strategy by using the transactions cost of choosing one strategy over another. The analysis shows that Trade Secrets are protected the same way in Denmark and the UK, and it seems efficient. In both countries it is possible to prevent an infringement before the normal trial by a temporary court order. It is also possible to make a search order in the UK before the normal trial, but it is, however, not possible to preserve relevant evidence in Denmark. Therefore there is a different in the protection. Regarding the factors that influence the companies’ choice, it is shown that the lack of the opportunity to do reverse engineering, and the appearance of tacit knowledge will make secrecy more attractive to the company. Moreover, it will sometimes get a better protection if it combines secrecy with disclosure or patenting. Other factors that might influence the companies’ choice are the life cycle, how much the technology differs from the previously known, and how long the company expects it will take someone to invent the same process. It can also use HRM strategies and security measures to prevent an infringement. The preferred choice will change if you include the factor from the analysis of the protection in Denmark and UK. Secrecy will no longer be an advantage if the opportunity to make a search order and secure evidence for a later case is not present. It might, however, still be the preferred choice when the process is very complex and observable in use.

EducationsMSc in Commercial Law, (Graduate Programme) Final Thesis
Publication date2012
Number of pages117