Trade Secrets

and
Biotechnology

By
Dr. Kalyan C. Kankanala
Brain league IP Services

© 2009 Brain League IP Services Pvt. Ltd.

 CoCa Cola
 I'd like to teach the world to sing
 In perfect harmony.
 I'd like to buy the world a Coke
 And keep it company.
 Importance
 Henry Perritt “Trade secrets are the
oldest form of intellectual property
protection”
 Mark halligan- trade Secrets are the IP
of the New Millenium and can no longer
be treated as a stepchild.
 Overview

 Historical Development
 Rationale
 Terms
 Real vs. Trade Secrets
 Differences
 US Law
 Civil and Criminal

 UTSA
 EEA
 UTSA : Trade Secret
 Elements

 Independent economic value

 Generally known or readily ascertainable
 Proper means
 Persons
 Reasonable Efforts
 UTSA : Trade Secret
 Reasonable efforts

 Express duty of non disclosure via

 Employment agreements
 Non-disclosure agreements
 Entrance and Exit interviews
 Restricted access
 Marking
 Security system and policy
 Misappropriation
 Conduct which results in obtaining trade secret
information by improper means constitutes
misappropriation.
 ‘Imrproper means’
 Criminal Conduct
 Breach of Contract
 Tortious liability
 Defenses
 Legal
 Equitable
 Remedies
 Injunction
 Damages
 Attorney fees
 Prejudgment interest
 EEA: TS Definition
 Meaning
 Independent economic value
 Not ascertainable through proper means
 Reasonable measures

 Enforceability measures
 Protective orders
 EEA
 Section 1831- Entities and Individuals –
foreign governments
 Section 1832 - All entities and Individuals
 EEA

 Intended Coversion
 Injury to Owner
 Interstate or Foreign Commerce
 Case 1
 Salsbury
Met with higher ups before joining
Worked on the same project
Took valuable documents
Wrote an article criticizing the project
 Case 2
 Pioneer v. Holden

 Seen around farms

 Managed to hire a key person
 Acquired data related to breeding
 Case 3
 Dr. Toddy and Ms. Angel
 Kaurav Software Solutions

 Handed over docs when husband not at

home
 Indian Law
 Trade Secrets

 Contract
 Trust
 Relation of Confidence
 Equity

 Non Compete/Non disclosure

 Patents Vs. Trade Secrets
 Karl F. Jorda - Patent Is the tip of the iceberg in the
ocean of trade secrets
 Prof. Donald Chisum- “Trade secret-patent
coexistence is well established, and the two are in
harmony because they serve different economic and
ethical functions.”
 James Pooley- Forget patents, trademarks and
copyrights....trade secrets could be your company's
most important and valuable assets.
 Patent v. Trade Secret
 Three areas of conflict

 Patentable
 Partially patentable
 Not patentable

 Factors
 Patent and Padlock
 Overprotect
 Exploit the overlap
 Build a wall
 Lay a mine field
 Fall back position

 Patent and Padlock or perish

Thank you