Patents, Trade Marks and Know-How: Regulated by Different Contracts and Motivators

Author: Chris Dent (Murdoch University)

Abstract
This paper is based on two assumptions: contracts are central to the control of “creations”; and the actions of an individual around creations may be understood in terms of “what motivates” them. Here, creations cover those that are protected by IP statutes and “know-how” covers the forms of knowledge that are, at best, controlled through the use of restrictive clauses in employment contracts. And, by “what motivates” them, I mean that any person, whether a creator or an investor in creations, incorporates (at least subconsciously) a number of motivators in their decisions around creations. There are three categories of motivators that impact on these decisions: internal, external and reputational motivators. This paper applies this “motivators” perspective to a range of creations – patents, trademarks and know-how. This range is important because different contracts are used to regulate the use of the different creations. Bringing these two understandings together enables a perspective that offers a more nuanced understanding of the processes of creation than is evident in much of the IP literature. It suggests that while, for example, trademarks and patents are seen as “proper” IP, there are, in some cases, more similarities in the seeking of patents and know-how than there is between those two and the seeking of trade marks – an acknowledgement of the different decision-making processes of the parties involved in each form of creation.

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