Compulsory licensing of trade secrets: ensuring access to COVID-19 vaccines via involuntary technology transfer (2025)

The authors

• Dr Olga Gurgula (PhD, LLM) is a Senior lecturer in Intellectual Property Law at Brunel Law School, Brunel University London. Mr John Hull (LLM) is Visiting Professor at King’s College London, Teaching Fellow at Queen Mary, University of London and a practising lawyer in the UK.

This article

• This paper considers how vaccine technology to meet the challenges of the COVID-19 pandemic can be made available to increase the production of vaccines. Its primary focus is on trade secrets, which are one of the main intellectual property (IP) rights protecting the complex manufacturing processes of vaccine production.

• The compulsory licensing of trade secrets presents some unique obstacles, and consideration is given to some practical solutions that might balance the interests of technology owners and the public interest in increased access to vaccines. In particular, this paper suggests that to make the currently discussed proposals on accelerating the production of COVID-19 vaccines, including compulsory licensing of patents and the TRIPS IP waiver, work, an additional mechanism of compulsory licensing of trade secrets is required.

• It is believed that a proposal for a new mechanism of compulsory licensing of trade secrets coupled with a discussion on the content of such licences, the challenges that would need to be addressed and the potential wording of such a licence would provide useful guidance to governments on how to make their compulsory technology transfer mechanisms more effective.

3.1. What is a vaccine and how is it produced?

Vaccines are a critical tool for defeating the COVID-19 pandemic. They work by prompting the body’s immune system to recognize and beat the viruses and bacteria that attack it. Once vaccinated, the body is able to prevent illness by fighting off disease-causing organisms when exposed to them.26 Some vaccines, such as inactivated and protein-based vaccines, contain dead virus or tiny fragments of the disease-causing organism to trigger an immune response; others, such as adenovirus- and RNA-based vaccines, contain genetic material from the virus that triggers the production of virus proteins after injection and generates an immune response.27

There are currently several types of COVID-19 vaccines, including inactivated virus,28 live-attenuated vaccine,29 viral vector30 and the genetic approach (nucleic acid vaccine).31 The latter type of vaccine, messenger RNA (‘mRNA’), is currently the most challenging to produce because it is based on an entirely new technology32 for which there is a very limited manufacturing capacity and a shortage of expertise and essential components.33 As vaccines are complex biological products, their production involves a lengthy and complicated process of manufacture and control.34 While each vaccine has a unique manufacturing process, certain stages are common, including the propagation of active components, purification, formulation, fill and finish and sampling and testing.35 This production is challenging for various reasons and involves, among other things, complex processes, specialist knowledge and experience,36 as well as requiring appropriate manufacturing facilities.37 Moreover, while the manufacture of conventional drugs involves relatively simple chemical syntheses, biological products, such as vaccines, require highly specific standards and procedures for all steps of production.38

By way of illustration, the method required to make the mRNA vaccines currently supplied by Moderna and Pfizer-BioNTech is briefly outlined below.39 The process consists of six discrete steps as follows

Step 1: using an appropriate bacterial culture, produce the precise DNA sequence that needs to be transcribed into mRNA.

Step 2: in a bioreactor, using appropriate enzymes, produce the mRNA using the DNA from step 1.

Step 3: produce lipids with positively charged groups on them. Producing these at scale is a complex step.

Step 4: is the most complex step in the chain. It consists of combining the Step 2 mRNA and Step 3 lipids into lipid nanoparticles. This requires the production of a ‘…well-defined mix of solid nanoparticles with consistent mRNA encapsulation…’.40 This, in turn, requires a bespoke microfilter device that enables the manufacture of very precisely created nanoparticles. Such a device enables very precise mixing, flow rates, concentrations and temperature controls necessary to produce the end product.

Steps 5 and 6: consist in the fill and finish steps and distribution (in the case of the Pfizer-BioNTech vaccine, at very low temperatures) to the desired destinations.

While some of these steps and the constituents needed to make the vaccines are well known, the combination of steps and the technology (particularly at step 4) required to produce the end product are the result of extensive trial and error and are accompanied by extreme levels of testing at each stage to ensure consistency and purity of the product.

The combination of steps required, the method of production, the equipment (particularly at step 4) and the experience of the engineers controlling the process taken together constitute the kind of trade secret that, along with any patents protecting, say, the vaccine formula, creates all-round protection for the product and the process by which it is produced.

3.2. Vaccines and IP rights

Vaccines are protected by a range of IP rights.41 The most prominent IP right relevant for vaccines and vaccine-related technologies is patents. Patents allow pharmaceutical companies to control and protect the results of their research and development by bestowing exclusive rights upon their owners. The patent holder has the right to prevent others from using his or her invention and thus controls the manufacture, distribution and pricing of such products.42 In relation to vaccines, patents may protect, for example, their formulations, including the combination of medicinal components and devices for vaccine administration (eg, an injection delivery system or a capsule designed to release the product in a particular area of the human body).43

The other significant IP right relating to vaccines is trade secrets. Trade secrets broadly include all types of information that provide an economic or competitive advantage to their owner because the information is not generally known.44 These relate to their methods of manufacture (see, for instance, the example given above), although test data, specific (unpatented) medical formulae, cell lines, genomic information and other biological materials may also be protected as trade secrets. In addition, pharmaceutical companies consider results collected from clinical trials to be trade secrets.45 Such information is protected by data protection regulations46 and is based on the provisions of Article 39(3) TRIPS, which requires WTO members to protect test data submitted to regulatory authorities against unfair commercial use and disclosure.

4.1. Compulsory licensing of patents

To accelerate access to COVID-19 vaccines, one of the often-suggested mechanisms is compulsory licensing.47 As pharmaceutical companies are actively patenting the results of their research into COVID-19 vaccines,48 these exclusive rights to COVID-19 vaccines may, therefore, restrict or even block access to such a therapy. However, international laws contain specific mechanisms relating to compulsory licensing and government use for non-commercial purposes, which permit limiting the exercise of exclusive rights under the patent.

A compulsory licence is an authorization granted by a state authority that allows the person who receives it to use the invention without the agreement of the patent holder.49 This mechanism can be found in the TRIPS Agreement.50 Moreover, in 2001, the Doha Declaration on the TRIPS Agreement and Public Health51 confirmed that the granting of compulsory licences was one of the flexibilities under the TRIPS Agreement, which all WTO members have the right to use if necessary.52 This mechanism has been implemented in the majority of jurisdictions worldwide and may be relied upon to address public health needs.53 A specific type of compulsory licence is ‘government use’,54 under which the state authorises its own use of a patented product by granting authorization to a state agency or department or even to a private entity.55 This may be an effective tool as the government does not need to send a formal request to the patent holder and can act upon its own initiative to resolve public health matters.56 When relying on this mechanism, governments would not need to spend time on negotiating a licence, as required by TRIPS in relation to a normal compulsory licence, and can grant government use when necessary.57

Certain limitations apply to compulsory licensing. A compulsory licence can typically be granted in relation to existing patents.58 The mechanism cannot be applied to patent applications.59 As some of the COVID-19 technologies are new, patent applications are currently being filed and will be granted in the coming years.60 Until the time of the patent grant, this mechanism of compulsory licensing will not, therefore, be applicable. Thus, national IP laws may need to be amended to allow compulsory licensing of patent applications.

Moreover, while compulsory licensing of patents may be useful in improving access to certain medicines (eg, small-molecule medicines), this mechanism may not be effective in relation to biologics, such as vaccines, because their manufacturing technology may be protected by trade secrets. Unlike small-molecule drugs, which are easier for others to reverse engineer and reproduce without the need to know a specific manufacturing process, the knowledge on how to produce a complex biological therapy, such as a vaccine, may be critical.61 Some argue that in the area of vaccines ‘a manufacturing process is a product’.62 Therefore, without such knowledge, a compulsory licence of patents would be insufficient,63 and there is no obligation for patent owners to provide any additional information under a compulsory licence beyond what is included in a patent specification.64 Currently, however, there is no equivalent mechanism in IP laws for compulsory licensing of trade secrets similar to the compulsory licensing mechanism developed for patents.

Moreover, concerned about being subjected to compulsory licensing of patents, pharmaceutical companies may be inclined to rely even more on trade secrets.65 This has led some authors to argue that trade secrets can be considered ‘among the most powerful legal weapons against [the] public’.66 Currently, however, IP laws provide no mechanisms to force pharmaceutical companies to disclose their lifesaving COVID-19 vaccine technologies without their consent to voluntary sharing, (there are, however, some limited tools in other laws, as those, for instance, available under competition law discussed below).67 This results in a dependence of countries, both developed and developing, upon pharmaceutical companies and the inability of countries to protect public health promptly.68 This is even though research for most of the vaccines was heavily subsidized by public funding.69 Therefore, the development of a mechanism that would supplement compulsory licensing of patents and allow compulsory access to and transfer of trade secrets protecting COVID-19 vaccine technologies is urgently needed.

5.1. Trade secret laws do not provide absolute protection

The extent to which trade secrets may be subject to enforced disclosure or legitimate use by third parties is regulated by national law. Taking EU countries as an example, the Trade Secrets Directive, which harmonizes national laws across the EU, does not provide protection against legitimate creation or discovery of trade secret information70 or the reverse engineering of a product in the public domain.71 The Directive also explicitly recognizes the

…application of [European] Union or national rules requiring trade secret holders to disclose, for reasons of public interest, information including trade secrets, to the public or to administrative or judicial authorities for the performance of their duties to those authorities.72

The ‘public interest’ is a flexible concept, but the EU Trade Secrets Directive does at least recognize that national governments may displace national trade secret laws where the public interest in, for example, the acquisition of life-saving technology takes precedence over the protection of a trade secret.

In the pharmaceutical field, a third party has the right to access certain information submitted as part of a marketing authorization dossier, including clinical trial data.73 For example, in the EU, the European Medicines Agency (‘EMA’) provides third parties with access to clinical trial data under Regulation 1049/2001/EC on access to documents and the EMA’s Policy 0070.74 These two policy instruments contain the right to access documents held by public authorities, including the EMA.75 Such access, however, is subject to exception in the event that the disclosure would undermine the commercial interests of a natural or legal person, including IP rights (the so-called commercially confidential information (‘CCI’)), unless there is an overriding public interest.76 In 2020, the Court of Justice of the European Union (‘CJEU’) issued several decisions in disputes, where originators sought to annul the EMA’s decisions to grant a third-party access to a document containing data submitted in the context of a marketing authorization application.77 The CJEU confirmed that there was no general presumption of confidentiality for clinical and toxicological study reports and upheld the General Court’s refusal to dismiss EMA’s decisions granting access.

However, there are no specific provisions in IP law either in the EU or the USA that allow compulsory access to trade secrets in order for them to be shared with competitors or the state.78 As a result, while a trade secret can be licensed voluntarily, a request for a licence could be denied.79 This already happened when several national manufacturers requested the licensing of the available vaccine technologies in a number of countries, which was denied by vaccine producers.80 For example, Biolyse, a Canadian manufacturer of cancer drugs, which is able to manufacture two million doses a month and thus has the potential to contribute to the global scale-up of vaccine manufacturing capacities, sought to manufacture and export the Johnson & Johnson (‘J&J’) adenovirus vaccine to developing countries. However, J&J refused to licence its technology to Biolyse.81

5.2. Compulsory licensing of trade secrets based on public interest

An important element of public interest is incorporated in trade secret laws. In the UK, for example, Lord Goff in the Spycatcher case82 said that there was a ‘public interest in the maintenance of confidence…[and]…the law will provide remedies for their protection’.83 A countervailing public interest defence against an action for breach of confidence, developed by the English courts, acknowledges that there are circumstances that may enable the recipient of confidential information to disclose that information to an appropriate person (a regulator) or, in some circumstances, to the media because the public interest recognizes the justification for doing so.84 That notion of public interest would not, however, stretch to providing justification for the enforced disclosure of trade secret technology by way of a compulsory licence.

The role of the public interest in trade secret law involves a balancing of the interests of trade secret holders against the public interest in disclosing trade secrets. While such a balancing exercise is typically undertaken when considering a defence against the unauthorised disclosure of trade secrets, there are isolated examples of the courts relying upon public interest to grant third parties access to trade secrets. In Detroit Med. Ctr. v. GEAC Computer Sys., Inc,85 for example, a case involving a proprietary computer software licensed to a hospital, the US court granted a preliminary injunction and forced the trade secret holder to provide confidential access to the hospital’s third-party service provider. When deciding whether to grant access to confidential information, the court undertook a balancing exercise and weighed, on the one hand, the public interest in protecting public health and, on the other hand, the interest in protecting confidential information. The court concluded that ‘the public’s interest in receiving adequate medical care outweighs its general interest in the performance of such [confidentiality] agreements’.86

It could be argued that in the case of compulsory licensing of trade secrets related to COVID-19 vaccines, there is an overarching public interest for disclosure of such trade secrets. Public interest disclosure would not presuppose public disclosure. On the contrary, it would require disclosure (or transfer) to another company, accompanied by a strict obligation of confidentiality. Therefore, such a mechanism is less damaging for the owner than the ‘public interest defence’ currently available in law. It is argued that the public interest argument in trade secret law should be extended from merely being relied upon as a defence against unauthorised disclosure to its use as a specific ground for granting a compulsory licence of trade secrets. This is especially important in a time of global pandemic, which serves as the perfect ground for invoking public interest.

5.3. Compulsory licensing of trade secrets and the TRIPS agreement

While Article 39 of the TRIPS Agreement may be considered to be the guiding world standard for the protection of trade secrets, it is useful to consider whether there are other elements of the TRIPS Agreement that may act to counterbalance the protection given to them.

Article 39 is drafted in terms of protection against unfair competition.87 It requires members to protect undisclosed information ‘[i]n the course of ensuring effective protection against unfair competition as provided in Article 10bis of the Paris Convention (1967)’. The regime of unfair competition essentially protects against unfair commercial practices. The law of trade secrets, as set out in TRIPS, protects against misappropriation of trade secrets, which is actionable if the trade secrets were acquired improperly and are either used or disclosed or in violation of a duty to maintain confidentiality.88 Specifically, an acquisition of a trade secret by improper means occurs ‘if it was obtained through theft, bribery, misrepresentation, breach or inducement of a breach of a duty to maintain secrecy, or through espionage, including electronic espionage.’89

At the same time, the TRIPS Agreement and the Doha Declaration lay down important principles and objectives in relation to the protection of public health. In particular, Article 7 TRIPS provides that ‘[t]he protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and the transfer and dissemination of technology, … in a manner conducive to social and economic welfare, ….’ (emphasis added). In addition, Article 8 states that ‘Members may, in formulating or amending their laws and regulations, adopt measures necessary to protect public health’ and that ‘[a]ppropriate measures may be needed to prevent the abuse of intellectual property rights by right holders or the resort to practices which …. adversely affect the international transfer of technology’ (emphasis added). Finally, paragraph 4 of the Doha Declaration states that ‘the TRIPS Agreement does not and should not prevent members from taking measures to protect public health’ and that it ‘can and should be interpreted and implemented in a manner supportive of WTO members “right to protect public health and, in particular, to promote access to medicines for all”’.90 Therefore, the interpretation of these provisions may lay down the grounds for a compulsory licensing of trade secrets under TRIPS to ensure the protection of public health, especially during the COVID-19 pandemic, by facilitating the production of vaccines through an international technology transfer.91

Moreover, the TRIPS Agreement contains no specific exclusions that would prevent compulsory licensing of trade secrets. In particular, while TRIPS has a provision on compulsory licensing of patents, it expressly prohibits compulsory licensing of trade marks. Article 21 states that it is ‘understood that the compulsory licensing of trade marks shall not be permitted’. It could be argued that had the drafters intended to exclude this mechanism from being applied to trade secrets, they would have explicitly stated so. Instead, the TRIPS Agreement remains silent on this issue, thus, arguably, leaving this matter for national legislation. Therefore, this could be construed as allowing governments to issue compulsory licensing of trade secrets when required, including for the protection of public health.

7.1. What are the characteristics of trade secrets that potentially make them so valuable in the field of life sciences?

A trade secret represents the foundation of every IP right, or, as the European Commission described it in a report analysing the field of trade secrets, ‘every intellectual property right starts life as a trade secret’.99 An as-yet unpatented invention, the idea in a designer’s head for a new innovative product or the plot for a new film or novel all have value based on their confidential status. Once the invention takes the form of a patent application or the idea becomes recorded, the status of the right changes but until the application is published or the idea becomes available, their value rests on confidentiality.

Trade secrets, like other IP rights, are national rights, protected under the laws of the country in which the owner (or controller—see below) is based or of the country where an infringement action is pursued.100 Some countries do so by unfair competition laws; others by a combination of tort, contract and employment statutes or codes. US trade secret laws are based on State law overlaid by a degree of uniformity in the Uniform Trade Secrets Act101 and Federal laws in the shape of the Economic Espionage Act 1996 and the Defend Trade Secrets Act 2016. The UK and other countries that follow the English common law base their protection predominantly on case law and the development of the breach of confidence action.102

Signatory countries to the TRIPS Agreement are obliged to provide protection to trade secrets as part of their national laws. Article 39 of the TRIPS Agreement is as follows

1. In the course of ensuring effective protection against unfair competition as provided in Article 10bis of the Paris Convention (1967), Members shall protect undisclosed information in accordance with paragraph 2 and data submitted to governments or governmental agencies in accordance with paragraph 3.

2. Natural and legal persons shall have the possibility of preventing information lawfully within their control from being disclosed to, acquired by, or used by others without their consent in a manner contrary to honest commercial practices so long as such information

1. is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question;

2. has commercial value because it is secret; and

3. has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret.

The reference to a ‘manner contrary to honest commercial practices’ in paragraph 2 means

…at least practices such as breach of contract, breach of confidence and inducement to breach, and includes the acquisition of undisclosed information by third parties who knew, or were grossly negligent in failing to know, that such practices were involved in the acquisition.

Although drafted in terms of protection against unfair competition, Article 39 makes it clear that a ‘manner contrary to honest commercial practices’ will include actions such as breach of contract (for example, breach of a standard non-disclosure agreement) or breach of confidence, the latter defining the legal action by which trade secrets are enforced in the UK and other common law countries.

The TRIPS definition borrows its ‘reasonable steps’ language from the US Uniform Trade Secrets Act 1985. The definition has also been used in its entirety in the EU Trade Secrets Directive,103 introduced in 2016 to harmonize trade secrets laws in EU countries.

That the EU chose to harmonize national laws in this way reflects another feature of trade secrets: they are becoming more, rather than less, important. In a survey carried out by an international law firm in 2017, CEOs in companies across a range of business sectors said that they considered their trade secrets to be more important than their patents, copyrights or trade marks.104 This is in line with the detailed analysis carried out by the European Commission before the EU Trade Secrets Directive was introduced and is consistent with a number of other studies carried out in recent years.105

7.2. Trade secret licensing

To answer the question: how compulsory licensing of trade secrets might be achieved as a matter of law and of practice, it is necessary to consider what a trade secret licence is and how it, in its various guises, operates.

A licence conveys no proprietary interest in the underlying IP. It simply authorises the licensee to do something by contract, which, in the absence of the licence, would be an infringement of the licensor’s rights. There is relatively little material about trade secret licensing.106 A licence of a trade secret has some clear similarities with other IP licences. But it also has some fundamental differences. If a licensor licenses its patent to a licensee, which later commits a breach of the licence, entitling the licensor to terminate the licence, the licensor still has its patent and can find an alternative licensee. By contrast, if a trade secret licensor licenses its rights to a licensee, which breaches the confidentiality provisions of the licence by deliberately or inadvertently disclosing the secret to the public domain, the licensor has, in effect, nothing left to commercialize. Since the commercial value of the trade secret is its secrecy, and that secrecy disappears, so too does the substance of the licensable right. The licensor may have a significant claim for damages against the guilty licensee, but that may hardly compensate it for the loss of its licensing business.

This, in turn, reflects a significant difference between trade secrets and other IP rights. Trade secrets rely for their value on being kept secret. Once secrecy disappears, so too does the value of the right. That explains why, in many countries, trade secret protection is not a function of property rights but of the relationship of confidence between the ‘owner’ and the recipient of the information.107

A trade secret licence will tend to be one of four types of licence

1. A hybrid patent—trade secret licence. This is usually called a patent and know-how licence and recognizes the fact that much patented technology is more usefully applied if you know how to put the technology into practical effect.108 So, the patent element might protect the key technology, but the trade secret (or know-how) element represents the most effective way of implementing it, by, for example, operating a machine or mixing components in a particular way.

   There are two key aspects to a hybrid licence that are worth mentioning, which are also features of the other licences discussed below. The first is the ability to define what the trade secret consists of. The ability to define the secret is one of the most difficult but important aspects of trade secret law. It is important for licensor and licensee alike. A licensee is entitled to know what it is entitled to use (and what it is paying for) and, hence, what it must be careful to protect by keeping it secret. Definition is also important to distinguish any improved method devised by the licensee and to which it may lay claim and, perhaps, licence back to the licensor. The second is a comprehensive confidentiality provision designed to impose strict obligations on the licensee to protect the secrecy and value of the information. Confidentiality terms will range from maintaining password-protected access to documents to disclosure on a need-to-know basis to manufacturing process operatives. Without these, there would be no effective way for the licensor to control or police how its information was being used.109

2. A ‘pure’ trade secret licence in which the technology is the trade secret information. In practice, these are relatively rarely encountered. Their effectiveness depends to a great extent on the kind of detailed confidentiality provisions outlined above, designed to give the licensor maximum control over how the licensee uses and protects the information in question.

3. A Technical Assistance Agreement. This is a combination of a licence and training by the licensor of the licensee’s operatives on how to use the technology concerned. In such a licence, in addition to defined technology and detailed confidentiality terms, there will be usually quite extensive provisions on how and where instruction and training of the licensee’s operatives will take place, in what language and for how long. Training will almost always be at the licensee’s expense. A technology assistance agreement recognizes that it can take a great deal of time to understand, operate and maintain highly complex processes (such as vaccine technology). In many cases, it will simply be insufficient to hand over some instruction manuals and hope that the licensee’s operatives are able to get the process to work. They need to be shown how the technology works in practice, hence the fact that agreements of this sort are also often called ‘show-how’ licences. This essential attribute of technical assistance is recognized in the wider context of technology transfer from developed to less developed economies

   Transfer of know how is largely a question of training and teaching sometimes accomplished through formal educational programmes and international exchanges, but usually through informal learning and on-the-job training.110

4. A ‘turn-key’ agreement. This is an altogether more complex arrangement, consisting of a combination of licence, training and constructing the plant or process line that encompasses the technology concerned. The additional element—actually constructing the physical plant or production line, gives the licensor some additional degree of protection, particularly if certain aspects of the plant or line are ‘black box’ components that conceal the secret technology and to which the licensee’s operative has no access.

There is one common feature to these licensing transactions, which is not so common in other IP licensing arrangements, and that is how and why the licensor chooses its licensee. The relationship between licensor and licensee is assumed to be a purely commercial one, in which the licensor’s interest is in earning an income from allowing the licensee to use the technology under licence. The same is true of other IP transactions. But the fact that the IP concerned—trade secrets—is different from other IP rights because of its unique fragility to being disclosed makes the relationship between licensor and licensee a different one. As previously explained, a licensor entitled to terminate a licence with a licensee still has its IP and can find another licensee. But a licensor of trade secrets, which have been, deliberately or inadvertently, disclosed to the world at large, has nothing left to licence.

This, in turn, explains why a trade secret licensor must make a different assessment of its licensee: is the licensee likely to be a trustworthy business into whose hands the licensor is prepared to put its secret information? Due diligence on the licensee thus assumes a higher level of significance than in other cases. The licensor will ask itself a number of questions about the licensee

• What is its status—a limited liability company, a partnership, a limited liability partnership and, in any of these, how long has it been established?

• What do its published or disclosed accounts say about its financial strength?

• What experience does its management have in operating a complex technology-based business?

• What controls and processes does it have in place to maintain security of the information against internal and external threat?

• In particular, can the licensee create a ‘culture of confidentiality’ in the workplace to enhance the protection given to the licensor’s trade secrets?111

• What is its track record of compliance with licences-in?

• In which country is it based and what legal mechanisms (particularly early-stage injunctions and the like) are available to enable the licensor, should the need arise, to enforce its contractual terms against the licensee.

In short, can the licensee be trusted with the licensor’s trade secret information?

8.1. Elements of a compulsory licence of trade secrets

There are a number of elements that a compulsory licence of trade secrets must contain, which are akin to those that would typically be included in a voluntary licensing agreement. In general, a voluntary IP licence includes, among other things, identification of the licensor and licensee, specification of the rights licensed, type of licence (exclusive, sole or non-exclusive), restrictions imposed on the licensee and remuneration, usually based on royalty payments. In addition, there are measures to ensure confidentiality and probably warranties from the licensor as to entitlement to grant the licence and from the licensee on the quality of products manufactured, sometimes backed by an indemnity designed to protect the licensor from product liability claims. The licence will include termination provisions, the usual range of ‘boilerplate’ provisions dealing with issues such as force majeure and, crucially, a dispute resolution mechanism and governing law clause.116 A trade secret licence normally contains additional ‘provisions that define the area of technology with precision, establish a confidential legal relationship between the parties, furnish proprietary information for a specific purpose only, oblige the recipient to hold information in confidence, and spell out exceptions to secrecy obligations’.117

Where then would a compulsory trade secret licence differ from a voluntary licence agreement? The following are likely to be the key areas of difference