protecting your business secrets in the modern era
Post on 23-Jan-2018
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This Presentation Will:
Describe the various types of confidential information1
Define trade secrets and explain the major takeaways from the new Defend Trade Secrets Act of 2016 (DTSA)2
Share best practices for protecting confidential information and trade secrets
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Discuss how trade secrets fit into the broader IP landscape4
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Confidential information + trade secrets are valuable business assets
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Although, all trade secrets must be kept confidential…
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Not all confidential information merits trade secret protection
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Confidential Information
Stuff we call “confidential”
but isn’t
Trade Secrets
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Types of Information Companies Keep
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What is a
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Other Confidential InformationHow Trade Secrets Differ from
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Enjoy greater legal protections
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Must meet specific criteria
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Capable of lasting indefinitely
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Lose protection if disclosed intentionally or accidentally
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Key Takeaways of the New DTSA
State Law Matters!
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Key Takeaways of the New DTSA
Federal Court Option
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Key Takeaways of the New DTSA
“Injunctive relief” + actual damages
Old Remedies
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Key Takeaways of the New DTSA
“ex parte” seizure ordersNew Remedies
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Key Takeaways of the New DTSA
future contracts + policiesWhistleblowers
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Response to the DTSA – What to Do?
Review new or updated agreements with employees1
Include additional notice language 2
Ensure forum selection clauses include federal courts3
Bring any DTSA claims before expiration4
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PRACTICESBest
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Limit Disclosure to Those Who Need to Know
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Obtain Contractual Protections
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Implement Security Measures Internally
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Address When Employees Join + Leave
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Require All to Comply
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Train Employees on What Matters + the Processes
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Prepare for Inadvertent Disclosure
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Confidentiality Non-Competition Non-Solicitation
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Questions to Consider
Should you have more than one agreement for different types of employees?
Should you define confidential information narrowly or broadly?
What type of evidence is helpful in non-compete cases?
What happens if I don’t enforce a non-compete?
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ConfidentialityClauses
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Define the confidential and trade secret information1
Define the obligations2
Define the means to preserve confidentiality3
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Define the obligations after termination of relationship4
Be supported by consideration5
Comply with the DTSA notice requirements6
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Consider including comprehensive
confidentiality policies in employee handbooks or maintaining stand-
alone policies
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Non-Compete Clauses
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Non-Compete Clauses
Particularly useful in cases where employee has important confidential information, trade secrets or customers
Virtually every state views with disfavor + limits restrictions placed on competition for former employees
High standard to have enforced
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KEY Aspects
Tolling Provisions Prohibitions Remedies Notification
ProvisionsChoice of
Law Clauses
Venue + Forum
SelectionClauses
Notice ofImmunity
(DTSA)
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Non-Solicitation Clauses
Indirectly protects trade secrets by limiting a former employee's freedom to "raid" company resources
Prohibits a former employee from approaching others, in an attempt to hire, retain, or create contractual relationships with them for a designated period of time
Prevent former employees from using confidential and trade secret information
Can be stand-alone agreements but are often included in non-compete agreements
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What is Intellectual Property?
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What is Intellectual Property?
a term used to define the intangible assets of a business products of the human brain
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The Legal Web
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Spinning a Better Web
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You need a strategy to spin the best web possible to create the most protection and create the most
VALUE
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Confidential Information
Stuff we call “confidential”
but isn’t
Trade Secrets
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Tools to Build the Web
Patents Copyrights Trademarks
DomainNames
TradeSecrets
ContractualProtections
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What is a Patent?
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Patent Requirements
Invention must be NOVEL
Obviousness
Full + true inventorship
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What is a Copyright?
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Copyright protects the “expression”
of an idea
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Copyright Requirements
The expression must be ORIGINAL
No protection for “functional articles”
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What is a Trademark?
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Trademark is a symbol of
good will
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Protects consumers from market confusion
Legal protection for your brand
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TIPSPractical
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Appoint an “IP Czar”
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Employee Education + Awareness
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Incentivize Innovation
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Lock Up Your Employees + Vendors (Contractually)
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Constantly Reassess Your Strategy
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Take Effective Steps to Keep Your Secret Stuff Secret
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The Business Decision:the Questions are
SIMPLE
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What is the cost of protection in a given market?
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What is the value of protection in that market?
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The answers are not always so simple and require
meaningful dialogue between business folks + legal advisors
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Thank You!
Brendan FeheleyLabor + Employment Co-Chairbfeheley@keglerbrown.com614.462.5482
Jeff NeinIntellectual Property Associatejnein@keglerbrown.com614.462.5418
Steve BarsottiIntellectual Property Directorsbarsotti@keglerbrown.com614.462.5458
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