A strategic tool to manage an organization’s intellectual property portfolio
What Are TradE SECRETS ?
Specific confidential information, which has a commercial value because it is confidential
For example:
- Formulations, assays, test protocols
- Secret manufacturing know-how
- Algorithms, programs, compilation of data
- Customer lists
- Customer segmentation methods
- Business intelligence
- Etc.
Trade Secrets provide an extended legal protection
Compared to the limited remedies protecting against the misuse of confidential information, Trade Secrets benefit of extended remedies:
- Compensation for damages
- Civil actions, against legal entities (e.g. employers)
- Court injunctions to stop infringement
- Recall of infringing products from markets
- Penal offense (in certain countries)
... but, special conditions have to be met:
To protect its Trade Secrets, an organization must adopt and implement a comprehensive Trade Secrets program which must ensure that Trade Secrets are:
- adequately identified as specific and valuable
- ring-fenced for access by a limited number of individuals
- protected by reasonable legal, technical and organizational measures, under the circumstances
THIRD PARTY TRADE SECRETS
The existence of a Trade Secrets program is also a defense against:
- 3rd Party claims of misappropriation of their Trade Secrets
- IP contamination by 3rd Party Trade Secrets
SCOPE OF A TRADE SECRETS PROGRAM
- Process to identify, qualify, monitor and disqualify Trade Secrets
- Creation and management of a Trade Secrets Registry
- Implementation and regular updates of procedures enforcing reasonable legal, technical and organizational measures
- Awareness training of employees; specific training of employees and consultants accessing and generating Trade Secrets
- Template clauses to ring-fence disclosures, receipt and generation of Trade Secrets
- Etc.
A STRATEGIC IP MANAGEMENT TOOL
A robust Trade Secrets Program is not just a protection tool against the loss of proprietary IP or against the unwitting misuse of 3rd Party Trade Secrets: it is also a prospective IP management tool.
The process of identifying Trade Secrets, assessing them as unique and valuable, and periodically reconsidering their status, tends to unveil discoveries and ideas that may lead to potential inventions.
Within the frame of a comprehensive Trade Secrets Program, decisions can be made on whether to patent new inventions or keep them as Trade Secrets.