Lecture 36: The Secrecy Requirement in Intellectual Property

Transcript

[Music] what is the secrecy requirement in order to gain trade secret protection the owner must show a reasonable effort to maintain secrecy this flexible standard set out by the UTSA is often a point of contention to determine whether a piece of information rises to the level of a trade secret courts often engage in a highly factual inquiry into the security measures taken by the owner to protect a trade secret what should a company do to maintain secrecy because trade secret protection is only given to information that is subject to reasonable efforts to maintain secrecy every person or company that wants to protect its trade secrets under the UTSA should adopt a trade secret protection plan the specific elements of such a plan will vary depending on the nature of the intellectual property to be protected as well as the circumstances surrounding its development and use because no rigid formula exists to determine if reasonable efforts to maintain secrecy are in place courts look to best practices within an industry to determine whether an owner of information made reasonable efforts to protect its secrecy memorializing a trade secret protection plan in writing helps to ensure that the business or person is indeed taking reasonable measures to protect the trade secret the person or company seeking to protect its intellectual property by using trade secret law should maintain a written statement of its trade secret security policy should litigation become necessary it is easier to persuade a court that the security procedures were indeed a primary concern if they are enumerated in writing a trade secret protection plan should include a program for ensuring that employees know what information is considered a trade secret and that employees are periodically reminded of their confidentiality obligations an essential part of this program is making certain that employees are aware of and familiar with the written trade secret protection plan employees should also be required to sign confidentiality agreements acknowledging that they have access to trade secret information that they will not disclose or misappropriate that information and they will report any disclosures finally exit interviews should be conducted with employees leaving the company to remind them of their written obligation not to disclose or misuse any trade secret information in addition to educating employees reasonable efforts to protect information often include physically restricting access to trade secrets trade secret information should be treated differently from non proprietary information and should if possible be physically segregated so that it is not readily accessible access to the intellectual property should be restricted to those with a need to know or access the information if possible physical security measures should be instituted including the use of locks on doors gates and cabinets containing trade secrets these types of security measures communicate that an effort is being made to protect the information given the ease with which documents can be reproduced trade secrets that are reduced to writing should be treated with special care such documents should be clearly labeled with shorthand instructions that are consistent with the written trade secret protection plan this attention to detail should also be followed in arranging for proper destruction of the documents trade secrets stored on a computer system are particularly susceptible to theft access to a computer system containing trade secrets should be restricted in accordance with a written trade secret protection plan and all related physical items such as USB drives other storage devices and printouts should contain the same trade secret legend used to identify documents containing intellectual property when allowing third parties access to a facility in which trade secrets are stored or used care must be taken to ensure that trade secrets are not inadvertently disclosed disclosure can occur either passively or actively passive disclosure might occur by carelessly leaving documents containing trade secrets in open view when business associates from another company visit your facility active disclosure might occur during a guided tour of the facility when a tour guide reveals the nature of a project or process the company is working on or has recently perfected active secret disclosure can also occur outside of the facility where trade secrets are housed through the dissemination of confidential information at trade shows in magazine articles in publications in press releases or during public speeches one method of curtailing such disclosures is to insist that all publications articles and speeches be reviewed and approved by a filter committee prior to dissemination although the very nature of many businesses requires that a company disclosed its trade secrets to prospective buyers licensees joint ventures or other outsiders this does not mean that the company must surrender all its rights to its trade secrets rather when the company enters into a transaction with a third party it should cautiously monitor the flow of information to the third party and document the nature of the trade secrets exposed and the specific limited use to which they may be put the company might consider putting Outsiders on notice regarding the need to keep information confidential and might even require outsiders to sign confidentiality agreements the standard for what constitutes reasonable efforts to maintain secrecy vary substantially depending on the circumstances and the information that is being protected however the different methods of maintaining secrecy all often help to show that the information in question qualifies as a trade secret and deserves trade secret protection [Music] you [Music]