Identifying Trade Secrets With Reasonable Particularity (Part 2)

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This article continues our prior discussion of identifying trade secrets. 

So much for the case law. But what is a trade secret owner to do — both in the case and proactively before the case commences — in light of these holdings? What follows are some practical steps.

Trade Secret owners should be mindful to: 

  • Describe the trade secrets in narrative form rather than incorporating by reference to other documents. If other documents must be referenced, try to do so with specificity.  
  • Instead of merely listing a concept or some generic categories of potentially protected information, articulate in the description why the allegedly misappropriated information merits protection. 
  • While on some level, ambiguity in describing is unavoidable because trade secrets include much more than unfiled patent applications with defined claim scope — especially when the trade secret includes negative knowhow — try to avoid catch-all phrases and IP-cliches such as “all related research, development, advancements, improvements, and processes related thereto” and “including the concept of x, y, and z.”  
  • Consider involving expert witnesses in both the articulation of the trade secrets (if only to bring some gravitas to the trade secret), and to any briefing on the sufficiency of the trade secret designation — as courts with far more experience with contracts and patents may be reluctant to let ambiguously described trade secret cases advance absent the cover of a well-crafted expert report.  
  • Consider periodically documenting, or even better, auditing their trade secrets, even in the absence of litigation. This will allow plaintiffs more time to consider the specific information they aim to protect as trade secrets, as well as the scope of such trade secrets. Indeed, it also may provide useful information about the value of those secrets and potentially avoid director or officer liability for poor trade secret asset management as well (and potentially avoid tax and transfer pricing issues).   
  • Just as important to documenting trade secrets is reviewing and managing the contractual regime and the physical and electronic security protocols around trade secrets. One way to effectively manage the regimes and protocols is to associate them as metadata of particular trade secrets. Indeed, by collecting and organizing key information related to trade secrets (metadata), trade secret owners can develop a method of describing — either using ad hoc methods or with special-purpose tools — the parameters of their trade secrets without having to disclose too much (if anything at all) about the actual secrets. 

Trade secret owners who follow the above recommendations should be well placed to avoid many if not all of the pitfalls associated with “reasonable particularity” described in the US case law.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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