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Overview

Trade secrets are valuable assets. In certain circumstances, trade secrets can provide greater strategic benefits than patents and other forms of intellectual property protection.

For example, trade secret protection can also be an alternative for patentable inventions when it is important to avoid the public disclosure that a patent requires and to avoid the loss of rights that occurs when a patent expires.

Confidential business or technical information that has economic value — including customer lists, software, formulas, manufacturing processes, and unpatentable inventions — may be protectable as a trade secret. However, use of trade secret rights to protect the value of confidential information requires the consistent implementation of various security procedures and practices. Hamilton Brook Smith Reynolds will work with you to develop strategies to maximize the protection for your trade secrets.

Our trade secret services include:

  • Providing advice on whether trade secret rights will provide an advantageous way to protect your intellectual property
  • Developing policies, procedures, and compliance steps necessary to maintain trade secret rights, including protection of computer systems and mobile devices as well as restrictions and limitations for Internet access and firewall protection
  • Drafting agreements for confidentiality and invention assignment with employees, suppliers, consultants, and other third parties to identify and protect trade secret rights
  • Training employees on their responsibilities and obligations under company policies for protection of trade secrets
  • Protecting against misappropriation of trade secrets through litigation and other means and defending against allegations of theft of trade secrets

Experience

  • Pursuing a group of a multinational client’s former employees who left to create a competing business based on CT scanning developments they made during their employment but had kept secret from the company.  The litigation resulted in an eight figure payment to our client. 
  • Advising a company on the procedures and safeguards its Human Resources and Information Technology personnel should develop for protecting against employees misappropriating its trade secrets.
  • Leading a client’s investigation to identify its software trade secrets that a departing employee had taken, and developing a litigation strategy to prevent the former employee’s new employer from using the software.
  • Negotiating on behalf of a small packaging consultant against a Fortune 500 company for the intellectual property rights in a trade secret the consultant had developed on a project for the company.  Without having to resort to litigation, we were able to develop evidence that induced the other company to assign all rights in the feature to our client and to pay our client’s legal fees.
  • Defended a manufacturer of oxygen flow valves in a trade secret, trade dress and unfair competition action in the District of Indiana.  After a two-day evidentiary hearing, the judge refused to enter a preliminary injunction, and as a result, the plaintiff voluntarily dismissed all of its claims, thereby enabling our client to continue business and become the leading company in the field.