Donal O’Connell and I are very pleased to announce that Practical Law of Westlaw / Thomson Reuters has published a Practice Note of ours related to trade secret audits. Click below to view the Practice Note in its entirety.Trade Secret Audits
Last time, I discussed outsourced manufacturing as well as the process and personnel. Now, I continue the discussion by exploring control over transactions and products as it relates to IP protection.
Establishing and Maintaining Oversight
Requiring the manufacturer to maintain a designated facility for all work involving the transaction can reduce the risk of violations and simplify the monitoring and protection of the company’s IP. In all cases, the company should reserve the right to frequently audit the manufacturer’s facilities. If possible, the scope of these audit rights should extend enterprise-wide to ensure protection and containment of critical information. Read more
After a period of skeptical acquiescence, anti-trust regulators seem to have come around and embraced patent pools for standard essential patents (SEPs.) The European Commission, no slouch when it comes to regulating SEPs, even remarked that the creation of patent pools “should be encouraged.” Indeed, one recent study purporting to be the first to empirically analyze the costs and benefits of patent pools estimates that pools save licensees hundreds of millions of dollars in transaction costs.
Notwithstanding the EC’s encouragement, anti-patent advocates, Google & Apple Unified Patents, has decided to engage in a social media and costly litigation campaign to kneecap two high efficiency video coding or HEVC patent pools. Filing 3 IPRs and 10 IPRs against patents belonging to HEVC Advance and Velos, respectively. At a cost of between $300,000 to $600,000 per IPR, these IPRs cannot come cheap – even if much of the work is done in-house. Accordingly, it is worth asking why is Unified trolling HEVC Advance and Velos, especially since there has yet to be any litigation by the owners of the HEVC patents that were IPR’ed.
After deciding on the basic corporate or contractual structure, the company should decide how best to strategically divide the manufacturing process. In the outsourced manufacturing context, the best process involves not only efficient manufacture, but also the most effective process to mitigate potential trade secret risks. Read more
A few days ago, in a federal court in Chicago gave a manufacturer some tough love about trade secret law. In the case, the long time president of a the plaintiff left to start a competing business and took a flash drive with him that included information about his former company’s pricing, customers, and suppliers. The former president later hired another former employee to join him, and she too brought with her information from her former employer. Some of this information was used “as a general reference point and a benchmark when determining” the new company’s needs and some of it was shared with the new company’s sales representatives, who were “instructed” to “target key” distributors of the plaintiff.
Sounds like a compelling trade secret claim for misappropriation likely to receive injunctive relief?
If you like what you read here and want immediate email notice of any SEP-related news click here! https://www.kidonip.com/subscribe-to-sep-related-news-via-email/
Very pleased to announce that our Business name is now a US registered trademark
Once the company selects a potential outsourced manufacturing partner, it should design a transaction structure that reinforces its commercial expectations and the manufacturer’s contractual obligations. Specifically, the company should structure the outsourced manufacturing transaction in a manner best suited to protect the company’s key intellectual assets (both registered IP and unregistered IP like trade secrets and know-how). Transaction structure considerations include both the particular corporate and contractual form of the relationship, and how the company will delegate the manufacturing process to the outsourced manufacturer. Read more
Over the past 100 years corporate America has become quite sophisticated in how it lobbies the US Federal and State government and regulators. While the messages being promoted may differ, lobbying for corporate interests as diverse as tobacco, sugar (and here), firearms, the environment, fossil fuels, health insurance (and here), financial regulation, and many other fields has become a major business in Washington and around the country. Indeed, some have argued that the sheer scale of corporate lobbying has allowed it to conquer democracy in America.
It is no surprise, then that Tech’s Frightful Five (Apple, Alphabet/Google, Amazon, Facebook and Microsoft) have become masters of the lobbying game in America.