Trade Secrets And Biotechnology

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