Protection of trade secrets and confidential information
A trade secret is a formulapracticeprocessdesigninstrumentpatterncommercial method, or compilation of information not generally known or reasonably ascertainable by others by which a business can obtain an economic advantage over competitors or customers.
The precise language by which a trade secret is defined varies by jurisdiction, as do the particular types of information that are subject to trade secret protection. Three factors are common to all such definitions:. Trade secrets are an important, but invisible component of a company's intellectual property IP. Their contribution to a company's value, measured as its market capitalizationcan be major. Having an internal scoreboard provides insight into the cost of risks of employees leaving to serve or start competing ventures.
In contrast to registered intellectual property, trade secrets are, by definition, not disclosed to the world at large. Instead, owners of trade secrets seek to protect trade secret information from competitors by instituting special procedures for handling it, as well as technological and legal security measures.
In other words, in exchange for an opportunity to be employed by the holder of secrets, an employee may sign agreements to not reveal their prospective employer's proprietary information, to surrender or assign to their employer ownership rights to intellectual work and work-products produced during the course or as a condition of employment, and to not work for a competitor for a given period of time sometimes within a given geographic region. Violation of the agreement generally carries the possibility of heavy financial penalties which operate as a disincentive to reveal trade secrets.
However, proving a breach of an NDA by a former stakeholder who is legally working for a competitor or prevailing in a lawsuit for breaching a non-compete clause can be very difficult.
As a company can protect its confidential information through NDA, work-for-hire, and non-compete contracts with its stakeholders within the constraints of employment law, including only restraint that is reasonable in geographic- and time-scopethese protective contractual measures effectively create a perpetual monopoly on secret information that does not expire as would a patent or copyright.
The lack of formal protection associated with registered intellectual property rights, however, means that a third party not bound by a signed agreement is not prevented from independently duplicating and using the secret information once it is discovered, such as through reverse engineering. Therefore, trade secrets such as secret formulae are often protected by restricting the key information to a few trusted individuals. Famous examples of products protected by trade secrets are Chartreuse liqueur and Coca-Cola.
Because protection of trade secrets can, in principle, extend indefinitely, it therefore may provide an advantage over patent protection and other registered intellectual property rights, which last only for a specific duration.
The Coca-Cola company, for example, has no patent for the formula of Coca-Cola and has been effective in protecting it for many more years than the 20 years of protection that a patent would have provided.
In fact, Coca-Cola refused to reveal its trade secret under at least two judges' orders. Companies often try to discover one another's trade secrets through lawful methods of reverse engineering or employee poaching on one hand, and potentially unlawful methods including industrial espionage on the other.
Acts of industrial espionage are generally illegal in their own right under the relevant governing laws, and penalties can be harsh. Thus, if a trade secret has been acquired via industrial espionage, its acquirer will probably be subject to legal liability for having acquired it improperly. The holder of the trade secret is nevertheless obliged to protect against such espionage to some degree in order to safeguard the secret.
Under most trade secret regimes, a trade secret is not deemed to exist unless its purported holder takes reasonable steps to maintain its secrecy. Commentators starting with A. Arthur Schiller assert that trade secrets were protected under Roman law by a claim known as actio servi corruptiinterpreted as an "action for making a slave worse" or an action for corrupting a servant.
The Roman law is described as follows:. The suggestion that trade secret law has its roots in Roman binary options and binary options trading gambling was introduced in in a Columbia Law Review article called "Trade Secrets and the Roman Law: See Trade Secrets and Roman Law: The Myth Explodedat The Myth Exploded that the actio servi corrupti was not used to protect trade secrets p.
Schiller is sadly mistaken as to what was going on. The actio servi corrupti presumably or possibly could be used to protect trade secrets and other similar commercial interests.
That was not its purpose and was, at most, an incidental spin-off. But there is not the slightest evidence that the action was ever so used. In this regard the actio servi corrupti is not unique. Exactly the same can be said of many private law actions including those for theft, damage to property, deposit, and production of property. All of these could, I suppose, be used to protect trade secrets, etc.
It is bizarre to see any degree the Roman actio servi corrupti as the counterpart of modern law for the protection of trade secrets and other such commercial interests. Trade secret law as we know it today made its first appearance in England in in Newbery v.
James [ dubious — discuss ] and in the United States in in Vickery v. Trade secrets law continued to evolve throughout the United States as a hodgepodge of state laws. Inthe American Law Institute issued the Restatement of Tortscontaining a summary of trade secret laws across states, which served as the primary resource until the latter part of the century. As ofhowever, only four states—Massachusetts, New Jersey, New York, and Texas—still rely on the Restatement as their primary source of guidance other than their body of state case law.
In Commonwealth common law jurisdictions, confidentiality and trade secrets are regarded as an equitable right rather than a property right with the exception of Hong Kong where a judgment of the High Court indicates that confidential information may be a property right. Campbell Engineering Ltd  held that the action for breach of confidence is based on a principle of preserving "good faith".
See Breach of confidence in English law. The test for a cause of action for breach of confidence in the common law world is set out in the case of Coco v. The "quality of confidence" highlights that trade secrets are a legal concept.
With sufficient effort or through illegal acts such as breaking and enteringcompetitors can usually obtain trade secrets. However, so long as the owner of the trade secret can prove that reasonable efforts have been made to keep the information confidential, the information remains a trade secret and generally remains legally protected. Conversely, trade secret owners who cannot evidence reasonable efforts at protecting confidential information risk losing the trade secret, even if the information is obtained by competitors illegally.
It is for this reason that trade secret owners shred documents and do not simply recycle them. A successful plaintiff is entitled to various forms of judicial reliefincluding:. Although trade secrets law evolved under state common law, prior tothe question of whether patent law preempted state trade secrets law had been unanswered.
In several U. This law contains two provisions criminalizing two sorts of activity. The first, 18 U. The second, 18 U. The statutory penalties are different for the two offenses. The EEA was extended in to allow companies to file civil suits in federal court. First, because it is a federal law, trade secret cases can be prosecuted in federal courts with concomitant procedural advantages.
Second, it provides for the unusual remedy of preliminary seizure of "property necessary to prevent the propagation or dissemination of the trade secret," 18 U. Third, it provides for remedies to include royalties in appropriate cases and exemplary damages up to two times the actual damages in cases of "willful and malicious" appropriation, 18 U. The DTSA also clarifies that a United States resident including a company can be liable for misappropriation that takes place outside the United States, and any person can be liable as long as an act in furtherance of the misappropriation takes place in the United States, 18 U.
The DTSA does not preempt or supplant state laws, but provides an additional cause of action. The DTSA provides the courts with broad injunctive powers. Because states vary significantly in their approach to the "inevitable disclosure" doctrine,  its use has limited, if any, application under the DTSA, 18 U.
In the United States, trade secrets are not protected by law in the same manner as patents or trademarks. Specifically, trademarks and patents are protected under federal statutes, the Lanham Act and Patent Actrespectively. One of the differences between patents and trademarks, on the one hand, and trade secrets, on the other, is that a trade secret is protected only when the secret is not not disclosed [ clarify ].
To acquire rights in a trademark under U. Registration of trademarks confers some advantages, including stronger protection in certain respects, but it is not required in order to get protection. Other nations have different trademark policies and this information may not apply to them. Assuming the mark in question meets certain other standards of protectibility, it is protected from infringement on the grounds that other uses might confuse consumers as to the origin or nature of the goods once the mark has been associated with a particular supplier.
Similar considerations apply to service marks and trade dress. By definition, a trademark enjoys no protection qua trademark until and unless it is "disclosed" to consumers, for only then are consumers able to associate it with a supplier or source in the requisite manner. That a company plans to use a certain trademark might itself be protectible as a trade secret, however, until the mark is actually made public.
To acquire a patent, full information about the method or product has to be supplied to the patent office and upon publication or issuance, will then be available to all. After expiration of the patent, competitors can copy the method or product legally. The temporary monopoly on the subject matter of the patent is regarded as a tradeoff for thus disclosing the information to the public.
One popular misconception held by many is that trade secret protection is incompatible with patent protection. It is typically said that if one applies for a patent one can no longer maintain a trade secret on the invention, but this is an oversimplification.
Also, to obtain a patent in the United States, any preferences [ clarification needed ] must likewise be disclosed. In many if not most situations, improvements will be made to an invention even after filing of the patent application, and additional information will be learned. None of this additional information must be disclosed and can instead be kept as a secret.
Frequently it is this information not disclosed in the patent that is the most commercially viable. Thus, patent licensors should take steps to continue to maintain trade secrets as secrets, otherwise they will be lost.
Accordingly, before disclosing any secrets not already protected by an issued patent the licensor will use a non-disclosure agreement. Compared to patents, the advantages of trade secrets are that a trade secret is not limited in time it "continues indefinitely as long as the secret is not revealed to the public", whereas a patent is only in force for a specified time, after which others may freely copy the inventiona trade secret does not imply any registration costs,  has an immediate effect, does not require compliance with any formalities, and does not imply any disclosure of the invention to the public.
Trade secret regulations that mask the composition of chemical agents in consumer products have been criticized for allowing the trade secret holders to hide the presence of potentially harmful and toxic substances. It has been argued that the public is being denied a clear picture of such products' safety, whereas competitors are well positioned to analyze its chemical composition.
From Wikipedia, the free encyclopedia. For other uses, see Trade Secrets disambiguation. Authors' rights Database right Indigenous intellectual property Industrial design right Integrated circuit layout design protection Moral rights Plant breeders' rights Related rights Supplementary protection certificate Utility model. Protection of Undisclosed Information".
Retrieved 25 January United States Attorneys' Bulletin. United States Department of Justice. Lemley Intellectual Property in the Technological Age, 3rd ed.
International cyberattacks with the intent to steal intellectual protection of trade secrets and confidential information IP continue to dominate the news, leaving many firms scrambling to shore up their computer networks to thwart such hacks. However, the greatest threat may be already within a company.
In more than 85 percent of the trade secret lawsuits in state and federal courts of the United States, the alleged misappropriator was either an employee or a business partner. That is the startling finding of A Statistical Analysis of Trade Secret Litigation in Federal Courtswhich is believed to be the first statistical study on the subject. Laws and legislation also continue to evolve. However, research into court cases reveals the key elements of an effective trade secret protection plan.
The Statistical Analysis of Trade Secret Litigation in Federal Courts found that confidentiality agreements with employees and business partners were the most important factors when courts decided companies had taken reasonable measures to protect trade secrets. However, winning suits reveal that companies can and should take a number of additional steps to build a case for legal redress in the event that their corporate crown jewels are compromised.
Protection of trade secrets and confidential information the study confirmed, confidentiality and non-disclosure protection of trade secrets and confidential information with employees and business partners constitute a great first line of defense and have won praise from the courts.
Companies should also develop procedures to make sure corporate policies are followed, and that protections and compliance are documented. The implementation of specific procedures to support aspects of company confidentiality policies are often cited favorably in cases.
Such procedures range from asking employees to return protection of trade secrets and confidential information information when leaving a company to marking documents as confidential, or not letting any single employee or third party have access to a full process, formula or other type of sensitive information. For example, when the PatientPoint health information service brought a legal action to prevent a terminated employee from using competitive, sponsor and other information that he had access to during his employment, the court found that PatientPoint had not asked for a non-disclosure agreement until a year after he started working.
In addition, the company did not demand that he return his laptop and confidential information until six months after he left. Most companies know that physical and electronic security is protection of trade secrets and confidential information important for protecting intellectual property, and courts are increasingly requiring it.
Companies should also incorporate confidential information protection into physical and information technology IT security system planning as well as restricting system access, and should regularly assess and improve their systems. It is difficult to make a case supporting trade secret theft without first identifying the information deemed to be confidential. As a first step, trade secrets should be documented in an internal registry.
Next, an assessment of the risks should be made in the event that they are stolen. Which areas are most at risk of breaches and leaks? Which departments are most vulnerable? Once protection of trade secrets and confidential information, companies should take additional protection of trade secrets and confidential information to secure those critical areas.
In a classic case fromelectronics firm Texas Instruments TI prevailed in a case against two former researchers who had copied all of its computer directories and then left to join a competitor. As these partners are a potential source of misappropriation, it is vital to have processes in place to protect confidential assets. Third-party non-disclosure agreements can be considered a reasonable protection effort but agreements are not enough. Companies should also include trade secret protection as part of their due diligence criteria, conduct ongoing reviews of processes in place for keeping information confidential and regularly communicate with third parties about expectations around trade secret protection.
Training is essential for employees and third parties so both groups protection of trade secrets and confidential information what is expected of them when handling such information. Failure to take these simple steps — which can fall outside basic corporate training — has resulted in some companies not gaining the protection of the law.
Problems arise when no one within a company has overall responsibility for protecting trade secrets and other confidential information. Courts have not looked favorably on companies that have not put a person or group in charge of trade secret protection. Best practices also point to establishing a cross-functional team with representation from those who can ensure that trade secret protection policies are being followed.
When a former employee of a bookkeeping protection of trade secrets and confidential information was charged with violating trade secrets by using its client lists, the case was dismissed when it turned out the public also had access to client names. No one appeared responsible for protecting this information.
Unfortunately, trade secret protection might only be addressed at key milestones such as a new joint venture. In reality, such protections should be ongoing. Efforts to protect trade secrets should be monitored annually and procedures updated often to maintain consistency and ensure compliance. Also, as companies grow, procedures and policies change. Trade secret protection plans should also evolve.
Additional leading practices for corrective actions and improvements include developing a rapid response plan, root-cause analyses of issues, and tracking. To protect critical business information, companies need to boost security and, importantly, put systems in place to ensure trade secret protection. The designations employed and the presentation of material throughout this publication do not imply the expression of any opinion whatsoever on the part of WIPO concerning the legal status of any country, territory or area or of its authorities, or concerning the delimitation of its frontiers or boundaries.
The mention of specific companies or products of manufacturers does not imply that they are endorsed or recommended by WIPO in preference to others of a similar nature that are not mentioned.
How do you secure company trade secrets from both external threats and potential thieves already inside the company? International cyberattacks continue to attract media attention, but a recent study shows that the greatest threat may lie within companies photo: Protecting corporate crown jewels The Statistical Analysis of Trade Secret Litigation in Federal Courts found that confidentiality agreements with employees and business partners were the most important factors when courts decided companies had taken reasonable measures to protect trade secrets.
The eight categories of a comprehensive protection plan include: Implement business procedures to augment non-disclosure agreements As the study confirmed, confidentiality and non-disclosure agreements with employees and business partners constitute a great first line of defense and have won praise from the courts.
Control physical and electronic access Most companies know that physical and electronic security is very important for protecting intellectual property, and courts are increasingly requiring it. Identify, assess and take steps to manage risks It is difficult to make a case supporting trade secret theft without first identifying the information deemed to be confidential. Conduct employee and vendor training Training is essential for employees and third parties so both groups know what is expected of them when handling such information.
Assemble a trade secret SWAT team Problems arise when no one within a company has overall responsibility for protecting trade secrets and other confidential information.
Make continual improvements Unfortunately, trade secret protection might only be addressed at key milestones such as a new joint venture. Related Links Further reading: