- Instituting an “IP aware” mindset within the company via an IP policy.
- Securing the company’s trade secret ownership.
- Running periodic mining or discovery sessions.
In
this blog post I will describe how to implement step 2.
A
necessary first step to protect trade secrets is adopting non-disclosure
agreements (NDAs). An NDA prohibits an external party which receives trade
secrets from disclosing the trade secrets. The NDA should place the onus on the
receiving external party to ensure adequate protection of the trade secrets. As
explained previously, performing due diligence ahead of releasing
the trade secrets to ensure that the receiving party will adequately protect
the trade secrets should be standard. Also, it should be standard to indicate in
the trade secrets database or registry which trade secrets have been disclosed
to the receiving party, when trade secrets are disclosed.
Employment
agreements should have relevant clauses to ensure that trade secrets will be
adequately protected. Employment agreements should have relevant
confidentiality or non-disclosure clauses as explained previously. Since
all inventions begin their lives as trade secrets, employment agreements should
also have clauses requiring the employee to identify inventions that the
employee created in the course of his/her employment. This includes clauses
requiring the employee to:
- Promptly disclose all inventions that the employee has created during the course of his or her employment; and
- Participate in IP discovery or mining sessions where the employee discloses inventions created. This could include clauses requiring the employee to fill invention disclosure forms.
The employment agreement should also include express language clauses
stating that the employee assigns to the company all applicable future rights to
all IP, including trade secrets, created in the course of employment.
It is likely that the company
will engage with a consultant/contractor to obtain services. The
consultant/contractor may need to know trade secrets to provide these services.
Prior
to releasing the trade secret(s) to any consultant/contractor, performing due
diligence to ensure that the consultant/contractor will adequately protect the
trade secret(s) should be standard. As explained previously, similar to all other IP, services or engagement
agreement between the organization and a consultant/contractor should specify
that:
- the company retains ownership and control of all trade secrets developed during the engagement;
- the consultant/contractor agrees to maintain the confidentiality of any trade secrets which it is given access to;
- the consultant/contractor is responsible for ensuring that each of the consultant/contractor’s employees and any sub-contractors engaged on the project agree in writing to assign all rights to any trade secrets developed in the project; and
- the consultant/contractor is responsible for ensuring that each of the consultant/contractor’s employees and any sub-contractors engaged on the project agree in writing to maintain confidentiality of any trade secrets it is given access to or which are developed in the project.
Finally, it is important to be able to prove existence and ownership of the trade secret(s) in the case of litigation. One such way is by using an external third party registry called the Intellectual Knowledge Registry (IKR), which is administered by the International IP Commercialization Council. The IKR provides incontestable proof of existence (PoE) of electronic documents using a unique digital fingerprint created as part of the IKR. The fingerprint cannot be used to regenerate the actual document, which remains in the safekeeping of the company. The fingerprint is stored in a secure digital vault. Even if the vault is hacked, hackers cannot regenerate the actual documents. Already IIPCC has partnered with WIPO GREEN to offer this service.
