Best Practices: How to Protect Trade Secrets From Loss Through Departing Employees; JD Supra, June 5, 2020

Fish & Richardson, JD Supra; Best Practices: How to Protect Trade Secrets From Loss Through Departing Employees

"1. Introduction

We start with the assumption that your company has already laid the foundation for IP protection, including the creation of a rock-solid trade secrets program (for more on this topic, see the Fish Trade Secrets: Protection & Defense webinar)...

What follows can help you to build an employee departure checklist to make sure valuable trade secrets aren’t lost.

2. Best Practices For Dealing With Departing Employees"

NDAs Are Out of Control. Here’s What Needs to Change; Harvard Business Review, January 30, 2018

Orly Lobel, Harvard Business Review; NDAs Are Out of Control. Here’s What Needs to Change

[Kip Currier: Came across this article about Nondisclosure Agreements (NDAs) while updating a Trade Secrets lecture for this week. The author raises a number of thought-provoking ethical and policy issues to consider. Good information for people in all sectors to think about when faced with signing an NDA and/or managing NDAs.]

"Nondisclosure agreements, or NDAs, which are increasingly common in employment contracts, suppress employee speech and chill creativity. The current revelations surfacing years of harassment in major organizations are merely the tip of the iceberg.

New data shows that over one-third of the U.S. workforce is bound by an NDA. These contracts have grown not only in number but also in breadth. They not only appear in settlements after a victim of sexual harassment has raised her voice but also are now routinely included in standard employment contracts upon hiring. At the outset, NDAs attempt to impose several obligations upon a new employee. They demand silence, often broadly worded to protect against speaking up against corporate culture or saying anything that would portray the company and its executives in a negative light. NDAs also attempt to expand the definitions of secrecy to cover more information than the traditional bounds of trade secret law, in effect preventing an employee from leaving their employer and continuing to work in the same field."

Waiting to Protect Intellectual Property Could Doom Your Startup; Kellogg Insight, August 3, 2017

Mark McCareins and Pete Slawniak, Kellogg Insight; Waiting to Protect Intellectual Property Could Doom Your Startup

"Based on insights from Mark McCareins and Pete Slawniak

It pays to be certain your idea is original.  

McCareins: A prior art search needs to be done to make sure that what you’re getting patented is really and uniquely your own.  There may be a temptation not to do a comprehensive search because it's expensive, but you don’t want to find out later that someone had the same invention.  

People say, “Well I got a patent so I’m good to go,” but that’s only half the battle. Even when the U.S. Patent and Trademark Office has granted a patent, that doesn’t mean a federal court might not come in later and invalidate that patent based on another party’s complaint.  

Slawniak: When you file a patent, look around and do a search. See what other folks in the industry are doing. See what other patents are out there. Read the scholarly work around technology in your field and have some conversations with people in the industry. Your patent is a reflection of your R&D investment and your technological advantage, so it's important to know exactly where that product differentiation is. An exhaustive search will ensure you have a strong patent, and hopefully help your patent issue faster. When you have something you believe has value, it’s worth the investment of time to develop and protect it. "