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Corporate Governance

United States: Best Practices for Trade Secrets Protection

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    1. Develop a company culture that embraces trade secret protection at all levels of the organization, and across all company departments. Trade secret protection must be recognized as a compliance issue, with potentially serious reputational, financial, and legal implications.
    2. Know the law for the applicable jurisdictions. The law across jurisdictions, while similar, is not uniform in terms of defining what constitutes a trade secret and the steps necessary to protect that information. Accordingly, it is important to have a good understanding of the legal constructs surrounding trade secret protection in the jurisdictions where the trade secrets may be maintained and disclosed.
    3. Have a clear understanding of the types of information that your company considers to be trade secrets. In other words, for each level or department within the company, make a list of the information that the company considers to be a trade secret. Once that list or inventory is created, the company can make an informed determination as to which of those warrant protection and the associated expense.
    4. Develop a plan for how to respond in the event of a breach. Again, these plans must be jurisdiction specific, and thus, a proper understanding of the law in those jurisdictions is vital to any response plan.
    5. Memorialize and operationalize company trade secret policies and procedures. All business units should be educated on the plans and be prepared to follow them on an urgent basis.
    6. Conduct and refresh confidential information trainings to ensure that your employees are adequately notified of your categories of confidential information. Take particular care to address personal devices, personal email accounts, and other file share programs/folders.
    7. Limit access to confidential information on a need-to-know basis. Courts in some jurisdictions have held that allowing access to trade secrets beyond those employees with a need to know the information fails to satisfy the requirement that reasonable measures be taken to maintain the trade secrets as secret. As a result, the applicable information irrevocably loses its trade secret status.
    8. Have tailored protection plans in place for incoming employees, exiting employees, vendors, and suppliers. For example, ensure that new employee onboarding and exiting employee procedures address trade secrets and confidential information. This is critical since disclosure can trigger loss or liability for the employer, even if inadvertent or accidental. Further, handle vendors and suppliers with special focus. Ensure consistency in the scope of information shared and insert checkpoints to prevent inadvertent disclosure.
    9. Standardize contractual terms regarding trade secrets to set a minimum, sufficient floor of protection, with added protections when the circumstances require.
    10. Consider alternative ways to monetize or value trade secrets. Valuation is critical for business transactions and potential licenses.
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Author

Kevin O'Brien is a partner in Washington, DC and former Chair of the North America Intellectual Property Practice Group. Mr. O'Brien has served as Co-Chair of the Patent Litigation Committee of the Federal Circuit Bar Association and has taught a course on Trade and Competition at Johns Hopkins University. He is currently Chair of the Trade Secrets Business Unit of the Global IPTech Group. He has more than 30 years of experience practicing in the areas of intellectual property and international trade law, with an emphasis on counseling and enforcement. Mr. O'Brien has been recognized as a leading lawyer by Chambers USA (District of Columbia) and has been selected as one of the "best lawyers" for IP law in Best Lawyers in America and in the Legal 500.

Author

Jay Utley heads the Firm’s Intellectual Property & Technology practice in Dallas and is experienced in all aspects of intellectual property, complex-commercial, and class-action litigation and case management, with significant experience as lead counsel managing litigation teams in competitor and multi-defendant litigation. Many of the patents litigated by Jay cover digital and computer-related technologies, such as telecommunications, semiconductors, displays, digital imaging, optics, financial systems, and networking. Jay also has significant experience in matters involving antitrust, trade secrets, unfair trade practices, racketeering, conspiracy, fraud, and bad faith, as well as proceedings in which the substantive legal issues have been eclipsed by the procedural complexities of multiple parties with multiple cases in multiple US and non-US jurisdictions and venues.

Author

Christine Streatfeild is a partner in the IPTech Practice Group. She has a broad range of trade, regulatory, and litigation experience, most frequently representing clients in antidumping and countervailing duty cases, safeguard measures, duties imposed for national security purposes (Section 232 duties), and Section 337 intellectual property and trade secrets disputes. She appears before the US International Trade Commission (ITC), US Department of Commerce (DOC), and the federal courts. She also routinely advises companies regulated by the Food and Drug Administration (FDA) on issues affecting mergers, acquisitions, licensing, and compliance. Prior to joining Baker McKenzie, Ms. Streatfeild served as the acting deputy director of the Generalized System of Preferences (GSP) and in the Environment and Natural Resources division of the Office of the United States Trade Representative. She has also served as an adjunct professor at the Krieger School, Johns Hopkins University, where she taught Global Trade, Policy and Competition.

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