"Under IP Laws the Disclosure of the Creation is the Rule; Secrecy of the Creation is an Exception"

The property means one's own thing being in possession of the owner. Possession of the property is the very strong indication to hold the property and is considered to be more than nine points of the law[1]. The concern to protect the property proliferates when the price (profit) of the property gradually accelerated in contrast to the cost for keeping the property. There are certain factors which govern the changes in the content of the property right: (1). Technological innovations and the opening of the new markets; (2). Changes in relative factor scarcity; and (3). the behavior of the state[2]. In the modern era, the advancement of the technology, increase in the population which led to scarcity of the property and the positive behavior of the state towards the property right of the individual, raises the concern for the protection and preservation of the property. On the basis of the nature of the property, the property can be divided into corporeal and incorporeal or tangible and intangible property. Besides other intangible property, intellectual property is one of the forms of the intangible property or incorporeal property. Intellectual property is the intangible creation of the human mind, usually expressed or translated into the tangible form to assign certain rights over the property[3]. Intellectual property is the creation of human mind and the IP right is the right given to the creator of the property over the creation of their mind. IP laws granted to the creator an exclusive right over the use of his/her creations for a certain period of time. Trade secrets are one such form of the intellectual property whose protection is at stake. The protection granted to the trade secrets is very week. As such there is not any specific legislation enacted by the legislature for the protection of the trade secret. It's very difficult to enforce the right of the person having the trade secrets against the person who willingly used the trade secrets without the permission of the creator of the trade secrets to gain commercial advantage in the market. This paper tends to analyze the protection of trade secrets under the different statutes and the laws. This paper also focuses on the need of an hour to have a separate enactment for the protection of the trade secrets.

Meaning of The Term Trade Secret
It seems very difficult to confine the trade secrets in one comprehensive definition. As we all know that the trade secrets is the specific information and that information can be classified into confidential and the public information. Further, confidential information can be classified as being a trade, government or personal secrets or a know-how depending upon the number and the class of people who have access to such information[4]. As such there is not any definition accredited to the trade secrets but certain qualification were provided wherein if the creation passed those qualification then that creation certainly be known as the trade secrets. The qualification set outs for the information to become the trade secrets are:
(1) that the information must be commercially valuable because it is secret;
(2) that the information must only be known to limited group of persons; and
(3) that the reasonable steps must be taken by the rightful holder of the information to keep it secret[5]. It need not be necessary for the information to be protected as trade secrets that that the information must qualified under the absolute secrecy rule. Even when the information satisfies the relative secrecy rule i.e., when the information is known to more than one person or more than one company or to several employees of a company, then also that information is good enough to be classified as confidential information[6]. The trade secrets is information which comprises several items retrieved from the general body of the information available to all, but identified and collected by an individual as a separate and identifiable collection. Trade secrets, such as chemical formulae, products specifications, manufacturing technique, drawings and the diagrams etc. are the commercial information, which although available in the public domain, but by the long elaborated process, an individual scratches some technical information which provides the competitive edge to the company in to the market, are good enough to be classified and protected as trade secrets[7]. In Saltman case, Lord Green stated that, which was also highly relied upon by the Indian courts in case of Konrad Wiedemann GmbH[8],that in order to make the information as confidential, the information, apart from the contracts, have necessary quality of confidence about it, namely, it must not be something which is public property and public knowledge. On the other hand it is perfectly possible to have a confidential documents, be it a formula, a plan, a sketch or something of that kind, which is the result of work done by the maker upon materials which may be available for the use of anybody; but what makes it confidential is the fact that the maker of the document has used his brain and thus produced by somebody who goes through the same process.[9]

Trade Secrets Protection Under The Law of Patents
Under the law of patents, it provides for an agreement between the creator of the invention and the public at large, wherein the inventor agrees to disclose the invention to the public and in turn the public assures to the inventors, not to use the patented invention without prior permission of the inventor. The state acts as the intermediary between the inventor and the public to protects the interests of the both the parties i.e. the inventors and the public at large. It can be said that the patent law tries to maintain the balance between the right of the inventors and the interests of the public at large[10]. Under the patent law, the inventors of the invention grants with exclusive monopoly right to use the patented invention for the limited periods of time. But this monopoly right of the inventors, doesn't include the right of the inventors not to use the invention, it means that if the inventors withholds the patented invention from the market then the government shall grants the compulsory licensing to any person who is interested to work with the invention in the public interest[11]. This provision of compulsory licensing[12] under the patent law dilutes the exclusive monopoly right of the inventors. However, the invention protected under the patent law, if commercially exploited by any person without the prior permission of the patentee, then the patentee can brought the suit before the court of law, for infringing the exclusive patent rights of the inventor, against the infringer who infringes the patent right of the inventor by exploiting the invention without the prior permission. Under the law of Patent, there are certain pre-requisites which are required to be satisfied by the Inventors for the grant of Patent to the invention. The requisites are (1). There must be a new product or process;[13](2). That product or process must be Non-obvious; (3). That product or process must be useful; (4). That product or process must be capable of Industrial application.[14].  The patent right is granted to the patentee who discloses the invention to the public while the protection to the trade secrets made available to the person who abled to keep secret his invention. It means that that the objective of the patent law is to disclose the invention while the objective of the trade secrets is to keep confidential the trade secrets. Also, the trade secrets can only be protected under the law of patent, if it satisfied all the conditions laid down under the Indian Patent Act, 1970. Well, it can be said that all trade secrets cannot be qualified to be patentable because every trade secrets doesn't able to match with the criteria set out under the patent Act for the grant of the patent. And also, the patented invention is protected for the limited period of time while the term of the protection for the trade secrets is for the unlimited term unless it disclosed in the public. Thus, it can said that there are some trade secrets which satisfied all the conditions laid down under the law of patent, for the invention to be granted as the patented invention, then that trade secrets can be protected under the law of patents. However, there are still certain trade secrets which doesn't qualify to be patented under the patent law (although can be protected under the utility model). Then the questions arises that what are the remedies available to such trade secrets under the Indian patent law. This question had not been answered by the legislature as well as judiciary and remains unresolved. Since, it cannot be able to match with the criteria set out by the Patent Act for the grant of the patent; the Patent Act cannot be able protect the trade secrets in overall aspects. Thus, it can also be said that every patented invention can be the trade secrets but every trade secrets cannot be patented.

Trade Secrets Protection Under The Law of Trademarks
The trademarks and the trade secrets, both are related to the trade or the businesses. The chief characteristics of the trademarks and the trade secrets are to aid the enterprises or the companies to remain in the market. It also helps the enterprises or the companies in attaining the competitive edge in the market. Also, the similarity lies in the terms of the protection of the both, where the trademarks are protected for perpetuity subject to use and renewal[15] while the trade secrets are protected until and unless the same discloses into the market or due to the rigorous works or findings by another person he/she get to know or discover the same information. However there are functionality differences in these two. The businesses or the companies openly uses the marks into the market to establish its goodwill and the brand name into the market while the trade secrets are never openly used by the enterprises or the businesses into the market, although, it only remain known to some of the employees of the companies which is also within the purview of non-disclosure agreements. The trademarks law protects such marks, whether registered or unregistered, which are capable of graphical representation and being capable of distinguishing the goods and the services of one traders or businesses from those of another traders or businesses[16] while the trade secrets law protects the confidential information of the enterprises wherein the employees of the companies are bound by the non-disclosure agreements not to disclose the confidential information into the public.

Trade Secrets Protection Under The Law of Contract
In the year 1989, in Multilateral trade Negotiations - The Uruguay Round, in the communication paper made by India, clearly written down that, the trade Secrets cannot be considered as the Intellectual Property Rights because the fundamental basis of the Intellectual Property is its disclosure, publication and the registration while the fundamental basis of the trade secrets protection is its secrecy and confidentiality. The paper also stated that the observance and the enforcement of the secrecy and the confidentiality should be governed by contractual obligations and the provisions of appropriate civil law.[17] Under the guise of Non-Disclosure Agreement (NDA), atleast two parties to the agreement entered into the contract not to disclose certain confidential information of the business to the third parties during the continuance or after the termination of the employment. This NDA's is one of the ways to protect the disclosure of the trade secrets by writing down the secrecy agreement between the parties. The agreement between the employer and the employee also entered into, for restraining the use of trade secrets of the businesses, by the employee, for his personal interest or for the benefits of other competitors of the owner's businesses or for non-competing with the owner's businesses after the termination of the employment. Trade secrets as defined are information which, if disclosed to competitors, would be liable to cause real or significant harm to the owner of the secret.[18] Lord Staughton[19] stated that for the information to be called as the trade secrets, firstly, the information must be the information used in trade or business and secondly, the owner of the confidential information must have taken reasonable steps to limit the dissemination of the information or atleast not encourage or permits widespread publication. However, it is contended before the court that this Non-Disclosure Agreement or the Non-compete Agreement contains negative covenants which makes the agreement void on the ground that it is in restraint of trade and against the principles found in section 27 of the Indian contract Act. The then Acting chief Justice in the case of V. N. Deshpande v. Arvind Mills Co. Ltd.[20], held that the agreement of service, containing a negative covenants preventing the employee from working elsewhere during the term covered by the agreement, are known to the Indian court and was made enforceable by the court.[21] Under the Non-disclosure Agreement, the protection of the confidential information from being disclosed extended to restrain the employees from using the information even if the information has been memorized by the employees during the course of the employment.

This can be seen from the following passages of the Judgments:
In the case of Printers and finishers Ltd. V. Holloway[22] which read as "the mere fact that confidential information is not embodied in a document, but is carried away by the employee in his head is not, by itself a reason against the granting of an injunction to prevent its use or disclosure by him".

In the case of bakers v. Gibbons[23] the court held that "in appropriate circumstances a person may be retrained from using confidential information only memorized and not written down".
In the case of Westminster Chemical NZ Ltd. V. McKinley[24] the court held that "...May be sufficient show that information used even from memory was such that ex-employee could not have known of it but for his employment and that it was of a confidential nature.

Further, in the case of Herbert Morris Ltd. Saxelby,[25] the court held that "trade secrets, 'the name of customers', all such things which in sound philosophical language are denominated objective knowledge- may not be given away by a servant; they are his master's property, and there is no rule of public interest which prevents a transfer of them against his master's will being restrained. It was further held that, a man's aptitudes, his skill, his dexterity, his manual or mental ability- all those things which in sound philosophical language are not objective, but subjective- they may and they ought not to be relinquished by a servant; they are not his master's property; they are his own property; they are himself"

Furthermore also, the Court went on to extend protection of the trade secrets and the confidential information is not limited to covenants which carved out in to the agreement between the employer and the employee, but also extend to the implied obligation (absence of the express terms) of the employee. In the case of Faccenda Chicken Ltd. V. Fowler[26] the L.J Neil had explained the position relating to the employee's implied obligations after the employment ends. The court made the distinction between the general duty of good faith and the duty not to disclose the confidential information or the trade secrets. The general duty of the good faith is wider in scope while the obligations of the employee under the employment contract are narrower in scope. The obligation not to use or disclose information may cover secret processes such as chemical formulae (Amber size and Chemical Co. v. Menzel[27]) or designs or special methods of construction (Reid and Sigrist Ltd. v. Moss and Mechanism Ltd.[28]) and other information which is of a high degree of confidentiality as to amount to a trade secret. The obligation does not extend to cover all the information which is given to or acquired by the employee while in his employment. It means that it can be said that all the confidential information shall not amount to trade secrets but all trade secrets are confidential information.

The court has also framed certain guidelines for determining whether any particular item of information falls within the implied terms so as to prevent its use or disclosure by an employee after his employment has ceased, the following matters must be taken into consideration:[29]
1. The nature of the employment. Thus employment in a capacity where confidential materials is habitually handled may impose a high obligation of confidentiality.
2. The nature of the information itself. The information will only be protected if it can properly be classed as a trade secrets or as material which, while not properly to be described as a trade secret, is in all the circumstances of such a highly confidential nature as to require the same protection as a trade secrets.
3. Whether the employer impressed on the employee the confidentiality of the information.
4. Whether the relevant information can be easily isolated from other information which the employee is free to use or disclose.

Conclusion
By analyzing the nature of the protection granted to the invention under the patent law is different from the protection need to be granted for the trade secrets and it can be said that it's not proper to stick to the patent law for the protection of the trade secrets. In the law of Trademarks, although they both related to the trade or businesses and their chief characteristics are to aid the company to remain in the market. But despite all these similarities, the law of trademarks unable to correspond full - fledged protection to the trade secrets. Despite the written statement made by India, in the year 1989 that trade secrets cannot be considered as Intellectual Property and its enforcement should be governed by the contractual obligation and the appropriate provisions of civil laws. Despite such statement made by India, there are many instances wherein the policies for the protection of the trade secrets are made under the aegis and platform of the Intellectual property law. One of the recent such instances is the National IPR policy that shall lay the future roadmap for IPR's in India. Under one of the objectives of this National IPR policy[30], 2016 (objective – 3 Legal and Legislative Frameworks), it is stated that the legal framework may be utilized to enhance transparency and efficiency in the administration and enforcement of IPR laws. Under this objective, the protection of trade secrets is one of the policy statements identified as the important areas of study and research for future policy development. It's the highly needed time to have the separate IP enactment under IP laws to secure the right of the persons or companies having the possession of the trade secrets.  

End-Notes
[1] Corporation of Kingston-Upon-Hull v. Horner, 98 Eng. Rep. 807,815 (1774).
[2] Terry L. Anderson and P.J. Hill, The evolution of property right; A study of the American West, Journal of Law and Economics, Vol. 18, No. 1, (April,1975), P. No. 165.
[3]http://www.caaa.in/image/34_hb_on_ipr.pdf
[4] Melvin F. Jager, Trade secrets Throughout the World, Vol. 2, Ch.- 19, P. No. 19.3, First South Asian Edition, 2014.
[5]http://www.wipo.int/patents/en/topics/trade_secrets.html
[6]Melvin F. Jager, Trade secrets Throughout the World, Vol. 2, Ch.- 19, P. No. 19.3, First South Asian Edition, 2014.
[7] Ibid
[8]Konrad Wiedemann GmbH v. Standard Castings Pvt. Ltd., (1985), (10), IPLR, 243.
[9] Saltman Eng'g Co. Ltd. v. Campbell Eng'g Co. Ltd., (1948), 65, RPC, 203.
[10] Eliza Beth Verkey, Intellectual Property: Law and Practice, Ed. 1st, EBC, P. No. 364.
[11] Ibid at P. No. 475.
[12] The Indian Patent Act, 1970, Section 82 to 94, Ch. – 16, P. No. 50 - 58, Universal Law Publication.
[13] Section 2 (1) (j) of the Patent Act, 1970 defines the term "Invention" means a new product or process involving an inventive steps and capable of industrial application.
[14] Section 2 (1) (ac) of the Patent Act, 1970 defines that the "capable of industrial application" in relation to an invention, means that the invention is capable of being made or used in an industry.
[15] Section 25 of the Trade Marks Act, 1999 states Duration, renewal, removal and restoration of registration. – Initially the duration of the Trade Marks after the registration shall be for the period of 10 years, but may be renewed from time to time in accordance with the provisions of section 25 of the Act, 1999.
[16] Section 2 (zb) of the Trade Marks Act, 1999.
[17] Multilateral Trade Negotiations – The Uruguay Round, MTN.GNG/NG11/W/37, 10 July 1989, Part V, P. no. 18.
[18] Lansing Linde Ltd. V. Kerr (1991) 1 All E.R. 418.
[19] Ibid
[20] AIR 1946 Bom. 423.
[21] The negative covenants were enforced in Pragji v. Pranjiwan (1903) 5 Bom. L.R. 878, Charlesworth v.      MacDonald I.L.R (1898) Bom. 103, Madras Railway Company v. Rust I.L.R. (1890) Mad. 18 which was approved in Subba Naidu v. Haji Badsha Sahib I.L.R (1902) Mad. 168, and Bom & Co. v. McDonald I.L.R (1908) Cal. 354.
[22] (1965) R.P.C.239
[23] (1972) 2 All E.R.759
[24] (1973) 1 N.Z.L.R.659
[25] (1916) AC 688
[26] (1986) 1 All ER 617
[27] (1913) 2 Ch.239
[28] (1932) 49 R.P.C.461
[29] American Express Bank Ltd. v. Ms. Priya Puri 2006(110)FLR1061  
[30] The Union Cabinet has approved the National IPR Policy on 12th may, 2016.