« In Confidence » Putting in Place a Trade Secret Protection Program in an SME Najmia Rahimi Senior Program Officer, SMEs Division, World Intellectual Property Organization (WIPO)

Idea: By keeping valuable information secret, you can prevent competitors from learning about and using it and thereby enjoy a competitive advantage in the marketplace. What are trade secrets? Do-it-yourself form of IP

General principles: Information that has commercial value and that has been scrupulously kept confidential will be considered a trade secret (TS). Owner will be entitled to court relief against those who have stolen or divulged it in an illegal manner.

This Presentation 1. What information qualifies as a TS? 2. What makes something a TS? 3. When can you get court relief? 4. How are TS lost or stolen? 5. How to protect your TS? 6. May TS be sold? 7. How is TS protection enforced?

Question 1 WHAT KIND OF INFORMATION QUALIFIES AS A TRADE SECRET ?

TRADE SECRET Provides competitive advantage Potential to make money Kept confidential

TRADE SECRET Financial information Technical & scientific information Commercial information Negative information

–Product information technical composition of a product (paint, medicine, beverage) technical data about product performance product design information –Manufacture information manufacturing methods and processes (e.g. weaving technique) production costs, refinery processes, raw materials specialized machinery –Know-how necessary to perform a particular operation Examples Technical and scientific information

–Computer technology hardware + software (esp. source code) whether < patent or copyright protection algorithms, formulas, data flow charts, specific procedures that are implemented in the software or website Software design documents Software development agreements –Drawings, designs, motifs, patterns –Laboratory notebooks –Pending patent applications

–Customer lists –Customer profiles, buying preferences, requirements –Business plans and strategies –New product names –Supplier arrangements –Sales methods –Personnel performance –Info re: new business opportunities Examples Commercial information

–Financial projections –Cost & pricing information –Sales data, price lists –Internal cost structure –Salary and compensation plans Examples Financial information

–Details of failed efforts to remedy problems in the manufacture of certain products –Dead-ends in research (e.g. waterproof) –Unsuccessful attempts to interest customers in purchasing a product Examples Negative information

Question 2 WHAT MAKES SOMETHING A TRADE SECRET ? When do you have legal protection?

Three essential legal requirements: 1.The information must be secret 2.It must have commercial value because its secret 3.Owner must have taken reasonable steps to keep it secret

What if many employees need to know? What if others need to know? –suppliers, joint development agreement, due diligence investigation, etc. What if you want to license technology? 1. Secret Required that be known only by one person?

not generally known among or easily accessible to persons within the circles that normally deal with this kind of information What is generally known ? –matters of common knowledge –information you find at library, online database, trade journals, patent information, etc –price list on website –graphics & object code of software application you sell off-the-shelf 1. Secret

Not required that be known only by one person –If you need to share –If you license technology which has limited distribution possible to protect confidential information by contractual means 1. Secret

Must confer some economic benefit on the holder This benefit must derive specifically from the fact that it is not generally known (not just from the value of the information itself) How to demonstrate: –benefits derived from use –costs of developing the TS –licensing offers, etc. –actual or potential 2. Commercial value

Under most TS regimes, you cannot have a TS unless you have taken reasonable precautions to keep the information confidential Reasonable case by case –reasonable security procedures –Non-disclosure agreements (NDA) –such that the information could be obtained by others only through improper means Importance of proper TS management program 3. Reasonable steps

Caution: Who owns the TS? TS (e.g. new technology, brand, etc) developed by employee … TS developed by external contractor To avoid disputes: WRITTEN AGREEMENT + ASSIGN in advance all trade secrets developed during employment or commission

Question 3 WHEN CAN YOU GET COURT RELIEF ?

COURT RELIEF if: TS + THEFT Courts will only grant relief if someone has improperly acquired, disclosed or used the information Only theft if wrongful !

2. Confidentiality agreement or NDA –e.g., employees, suppliers, consultants, financial advisors What is typically considered wrongful? 1. Duty of trust –implied or imposed by law –e.g., employees, directors, lawyers 3. Industrial espionage, theft, bribery, hacking, eavesdropping

What is lawful? Discovery of the secret by fair and honest means 1. Independent creation –without using illegal means or violating agreements or law – patent TS protection provides no exclusivity !

What is lawful? 2. Reverse engineering –Take product apart and see how it ticks –Common practice among software companies: studying competitors' products to make software that can interoperate with the software being studied to make a product that will compete with it –E.g. decompile object code to reveal its structure and figure out the interface specifications for interoperability purposes –E.g. look at a program's input and outputs

2. Reverse engineering –Solution: contractually forbid reverse engineering (in software license agreement) –Technological protection measures

Question 4 HOW ARE TRADE SECRETS LOST OR STOLEN ?

A Growing Problem. Why Does It Occur? –Way we do business today: increased use of contractors, temporary workers, out-sourcing –Declining employee loyalty: more job changes –Organized crime: discovered the money to be made in stealing high tech IP –Storage facilities: DVD, external memories, keys –Expanding use of wireless technology: devices for interception of communication without consent

–Reverse engineering, independent discovery –Improper licensing –Burglaries by professional criminals targeting specific technology –Network attacks (hacking) –Laptop computer theft –Inducing employees to reveal TS Examples

–departing or disgruntled employees –intentional (malicious) –inevitable (knowledge acquired) –by ignorance 80% of trade secret loss < employees, contractors, trusted insiders!

Case Coca-Cola Trade Secret Trial Prosecutors say a former Coca-Cola secretary took confidential documents from the beverage giant and samples of products that hadn't been launched with the aim of selling them to rival Pepsi Faces up to 10 years in prison if convicted of conspiracy. AP Business, January 15, 2006

Case Company accused of misappropriating TS from an inventor Inventor of new design for vacuum cleaner presented design to vacuum cleaner manufacturer. Signed NDA covering the design. Manufacturer obtained patent on the design one year after the inventor disclosed the design to them, and made estimated sale profits of $100,000, : lawsuit settled. Company paid $30,000,000 to inventor.

Case High-Tech Company vs. Employee Technical manager (employee) of high-tech company X resigned Went to work for another high-tech company Y Departing employee used and disclosed TS Company X filed suit against departing employee Court order: Departing employee prevented from performing work for his new employer (Y) in connection with any product that competes with Xs products.

Question 5 HOW TO PROTECT YOUR TRADE SECRETS?

1. Identify trade secrets Accurate record keeping is important.

Factors to determine if information is a TS –Is it known outside the company? –Is it widely known by employees and others involved within the company? –Have measures been taken to guard its secrecy? –What is the value of the information for your company? –What is the potential value for your competitors? –How much effort/money spent in developing it? –How difficult would it be for others to acquire, collect of duplicate it?

2. Develop a protection policy Advantages of a written policy: –Clarity (how to identify and protect) –How to reveal (in-house or to outsiders) –Demonstrates commitment to protection important in litigation

–Educate and train: Clear communication and repetition Copy of policy, intranet, periodic training & audit, etc. Make known that disclosure of a TS may result in termination and/or legal action –Monitor compliance, prosecute violators

3. Restrict access to only those persons having a need to know the information computer system should limit each employees access to data actually utilized or needed for a transaction

4. Mark documents –Help employees recognize TS prevents inadvertent disclosure –Uniform system of marking documents paper based electronic (e.g. confidential button on standard screen)

5. Physically isolate and protect –Separate locked depository –Authorization –Access control log of access: person, document reviewed biometric palm readers –Surveillance of depository/company premises guards, surveillance cameras –Shredding –Oversight; audit trail

6. Restrict public access to facilities –Log and visitors pass –Accompany visitor –Sometimes NDA/CA –Visible to anyone walking through a companys premises type of machinery, layout, physical handling of work in progress, etc –Overheard conversations –Documents left in plain view –Unattended waste baskets

7. Maintain computer secrecy –Secure online transactions, intranet, website –Password; access control –Mark confidential or secret (legend pop, or before and after sensitive information) –Physically isolate and lock: computer tapes, discs, other storage media –No external drives and USB ports –Monitor remote access to servers –Firewalls; anti-virus software; encryption

8. Measures for employees 1. New employees Brief on protection expectations early Obligations towards former employer! Assign all rights to inventions developed in the course of employment NDA/CA Non-compete provision

2. Current employees Prevent inadvertent disclosure (ignorance) Train and educate NDA for particular task 3. Departing employees further limit access to data exit interview letter to new employer treat fairly & compensate reasonably for patent work

Non-Competition Clauses (covenants not to compete) in Labour Contracts After employee leaves prior employer: May he work for competitor? May he work in related job? May he open a competing business? Is covenant not to compete enforceable?

9. Measures for third parties –Sharing for exploitation –Consultants, financial advisors, computer programmers, website host, designers, subcontractors, joint ventures, etc. Confidentiality agreement, NDA Limit access on need-to-know basis

Audit of Trade Secrets: Steps Identification of most important trade secrets Consultations with R&D division Sales, marketing and human resources Information management Contacts with customers, etc. Verification of a companys ownership over those trade secrets Checking all documents, contracts, assignments, licenses, etc.

Audit of Trade Secrets: Steps Verification that confidentiality procedures are duly followed Contacting human resources, security departments which maintain trade secrets Verification that employees and all third persons do not disclose trade secrets Contacting human resources department in order to establish if contracts include confidentiality clauses To clarify what confidentiality means are taken so far, as far as external persons are concerned

Question 6 MAY TRADE SECRETS BE SOLD OR LICENSED?

SALE –Most TS sales occur as part of the sale of the business LICENSE –e.g. in combination with patent license –e.g. software license for highly specialized program –Advantage: additional revenues –Disadvantage: risk of disclosure (potential loss) –In some countries, restrictions

TS Licensing Definition of the secret subject matter –what is to be kept confidential? –marked as such or broad clause? Permitted use –disclosure to employees, professional advisors? –modification of technology? Precautions to be taken Exclusions

TS Licensing Duration of secrecy obligations Royalties Sanctions Should not be subject to alternative dispute resolution

TS Licensing Can licensee be obligated to continue paying TS royalties even if the information has entered the public domain? In case of license for patent + related TS: Can licensee be obligated to continue paying TS royalties when patent expires or is invalidated?

TS Licensing Mass-marketed technology (e.g. software): Possible to negotiate NDA with every end-user?

Question 7 HOW IS TRADE SECRET PROTECTION ENFORCED? What can you do if someone steals or improperly discloses your TS?

1. Contract law When there is an agreement to protect the TS NDA/CA anti-reverse engineering clause Where a confidential relationship exists attorney, employee, independent contractors 2. Principle of tort / unfair competition Misappropriation by competitors who have no contractual relationship theft, espionage, subversion of employees TS protection may be based on...

3. Criminal laws e.g. for an employee to steal trade secrets from a company e.g. unauthorized access to computers theft, electronic espionage, invasion of privacy, etc. circumvention of technical protection systems 4. Specific trade secret laws US: Uniform Trade Secrets Act; Economic Espionage Act

Law of June 10, 1993 on Companies (art 39-40) –Define the term of business secrets and protection Law of April 1993 on Protection of Competition (art 13) –General clause and provisions forbidding special acts governing disclosure of business secrets Employment Act (art 37-40) Employment Related Industrial Property Rights Act (art 7) –employee must protect employers secrets Paris Convention (art 10bis) + TRIPs (art 39) –unfair competition Relevant laws in Slovenia

1. Order to stop the misuse 2. Monetary damages actual damages caused as a result of the misuse (lost profits) amount by which defendant unjustly benefited from the misappropriation (unjust enrichment) 3. Seizure order can be obtained in civil actions to search the defendant's premises in order to obtain the evidence to establish the theft of TS at trial 4. Precautionary impoundment of the articles that include misused TS, or the products that resulted of misusing Remedies

To establish violation, the owner must be able to show : –infringement provides competitive advantage –reasonable steps to maintain secret –information obtained, used or disclosed in violation of the honest commercial practices (misuse)

TRADE SECRETS FOR BUSINESSES CONCLUSIONS

TS protection for financial, commercial & (secret) technical information: develop effective internal TS program to maintain trade secret status restrict access impose obligation of confidentiality to anyone who has access

Certain aspects of business/products cannot be maintained as a trade secret information or technology that must be disclosed to the public in order to market the product information or technology which is part of a product sold to the public and can be reverse-engineered mass-marketed technology or products where competition is so intense, that very likely to be independently developed by others within short time if great deal of personnel movement between competitors

Alternative or additional protection for TS: make reverse engineering difficult (compiled code) technological protection measures patents copyright protection Be careful about signing confidentiality agreements and non-compete covenants

Thank You! Najmia The Importance of Trade Secrets for Businesses