This article continues our prior discussion of identifying trade secrets.
So much for the case law. But what is a trade secret owner to do — both in the case and proactively before the case commences — in light of these holdings? What follows are some practical steps.
Trade Secret owners should be mindful to:
- Describe the trade secrets in narrative form rather than incorporating by reference to other documents. If other documents must be referenced, try to do so with specificity.
- Instead of merely listing a concept or some generic categories of potentially protected information, articulate in the description why the allegedly misappropriated information merits protection.
- While on some level, ambiguity in describing is unavoidable because trade secrets include much more than unfiled patent applications with defined claim scope — especially when the trade secret includes negative knowhow — try to avoid catch-all phrases and IP-cliches such as “all related research, development, advancements, improvements, and processes related thereto” and “including the concept of x, y, and z.”
- Consider involving expert witnesses in both the articulation of the trade secrets (if only to bring some gravitas to the trade secret), and to any briefing on the sufficiency of the trade secret designation — as courts with far more experience with contracts and patents may be reluctant to let ambiguously described trade secret cases advance absent the cover of a well-crafted expert report.
- Consider periodically documenting, or even better, auditing their trade secrets, even in the absence of litigation. This will allow plaintiffs more time to consider the specific information they aim to protect as trade secrets, as well as the scope of such trade secrets. Indeed, it also may provide useful information about the value of those secrets and potentially avoid director or officer liability for poor trade secret asset management as well (and potentially avoid tax and transfer pricing issues).
- Just as important to documenting trade secrets is reviewing and managing the contractual regime and the physical and electronic security protocols around trade secrets. One way to effectively manage the regimes and protocols is to associate them as meta–data of particular trade secrets. Indeed, by collecting and organizing key information related to trade secrets (metadata), trade secret owners can develop a method of describing — either using ad hoc methods or with special-purpose tools — the parameters of their trade secrets without having to disclose too much (if anything at all) about the actual secrets.
Trade secret owners who follow the above recommendations should be well placed to avoid many if not all of the pitfalls associated with “reasonable particularity” described in the US case law.
About the Authors, David Cohen, and Donal O’Connell:
David Cohen and Donal O’Connell have been involved with this form of IP for several years.
They have had over 50 papers published on various aspects of trade secrets and trade secret asset management. They have conducted intense trade secret workshops for a variety of companies and organizations. They have also developed a leading-edge trade secret asset management solution to help clients (operating companies, legal & IP firms, finance & tax firms, and IP insurance providers) manage such assets in a proper and professional manner.
David Cohen has been practicing IP law for over 20 years. He is the former Chief Legal and IP Officer at Vringo (at the time a public tech and IP licensing company); Senior Counsel at Nokia; and was an IP lawyer first at Skadden Arps and then at Lerner David.
Donal O’Connell is ex-VP of R&D and ex-Director of IP at Nokia; Adjunct Professor of IP at Imperial College Business School and an IAM300 Top Global IP Strategist member for several years.
David L. Cohen, P.C. – Kidon IP
123 West 93rd Street
New York, NY 10025