trade secrets and biotechnology

Trade Secrets Trade Secrets and and

BiotechnologyBiotechnology

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