To protect its Intellectual Property Rights ("IPR") by demonstrating that certain information qualifies as a trade secret, companies should consider the following:
1. Develop and Implement an Overall Intellectual Property Rights Protection Program.
Whether you are just starting out or are a multinational company with enormous revenues, an effective IPR protection strategy or program ("Program") is critical to a competitive advantage. The four intellectual property rights: patent, copyright, trademark and trade secrets, need to be considered in developing, implementing and maintaining a Program.
One important detail of a Program is to assign an employee as the initial IPR Officer of the company. We have seen employees from any number of areas be appointed to this position (e.g. legal, finance, IT, human resources). All employees are to be informed of the appointment, and the IPR team, if the needs of the company demand a team. Our experience shows that the most effective IPR team draws from various disciplines within a company, based, among other factors, upon the business of the company, number of employees, size of the IP portfolio, types of IP and jurisdictions in which business is conducted. The team members whom companies most often fail to include are persons experienced in the full‐range of human capital issues, i.e. understanding and guiding company culture, compensation and benefits, issues of motivation and morale, legal issues as well as internal contracts, policies and procedures. Such a person will add significant value to the IPR team.
2. Conduct a Trade Secrets Audit
Conduct a trade secrets audit to identify information that can be classified as trade secrets. It has been our experience that audits are expensive and audits without a plan and timeline for completion are the most expensive and time‐consuming and can become a waste of resources producing little benefit. First plan the audit, then successfully conduct the audit.
Questions to be answered to assist trade secret identification include the following:
Is the information known outside the company? To what extent?
Is the information known inside the company? By whom, categorically? To what extent?
What steps have been taken to keep the information secret?
What is the value and/or competitive advantage in keeping the information secret?
What has been the cost (time, resources, expenses) in developing the information?
How would such information be properly (i.e. without misappropriation) obtained or duplicated? How difficult would this be?
Could such information be properly developed or duplicated? How difficult would this be?
It is important to note that a company should not identify all its potential confidential information as trade secrets because being over‐inclusive could potentially trivialize the trade secret portfolio.
3. Employee Policies, Procedures and Training
The importance of employee policies, procedures and training cannot be over‐emphasized in the development of the IPR Program. In addition to the policies that are discussed in detail below, a company should also consider adopting the following policies to assist in protecting its trade secrets: external communications policy, electronic mail policy, internet usage policy, new confidential information notification policy, new inventions notification policy, lab and engineering notebooks policy, information classification policy and a computer usage policy. Policies should be drafted to work with other policies and, as always, considering the business, IP portfolio, types of IP, size and culture of the company. Initial and ongoing training on the policies and procedures is a crucial piece of a successful Program. Drafting and implementing policies is only the beginning. The key to an effective program is continued compliance with all policies as well as updating policies as necessary.
Stay tuned for our next blog where we will cover items 4-9 about the Best Practices to Protect Trade Secrets.
For more information about this topic, please contact the author at Lynne@SheltonPower.com or call toll free at 866-993-7262.