Managing and Valuing Trade Secrets



About the Course:

You can’t manage what you can’t measure. This unique program provides sound guidance into identifying, managing and valuing trade secrets. Profound insight–from a leading trade secrets lawyer with more than 25 years of experience–is provided relative to securing patents in light of the existence of trade secrets; licensing trade secrets; and, litigating trade secrets. This session discusses how prevailing legislation impacts the governance of trade secrets.

Among the relevant legislation presented is:

  • Uniform Trade Secrets Act (UTSA)
  • Restatement (Third) Unfair Competition
  • Economic Espionage Act of 1996 18 USC Section 1831 et seq. (EEA)
  • Computer Fraud and Abuse Act 18 USC Section 1030 et seq. (CFAA)
  • Sarbanes-Oxley

In terms of valuing trade secrets, this course delves into many interesting nuances of the Six Factor Litmus Test for Trade Secrets. Also explained is how to categorize and value trade secrets based on the Subject, Format, Product grid.

Among the issues addressed are:

  • What is the novelty standard for trade secrets?
  • What is a patent applicant supposed to do as far as disclosing prior art if the prior art is its trade secret?
  • What penalties exist for violating a trade secret if the trade secret is covered by a Non-Disclosure Agreement?
  • Are licensees required to continue paying royalties for trade secrets when the trade secret becomes common knowledge?
  • Why might it be preferable to have two separate license agreements–one for trade secrets and one for patents?
  • Can negative knowhow be licensed?
  • What are some of the major differences that between litigating infringement of patents versus expropriation of trade secrets?
  • How do damages awards for trade secrets differ from those patents?
  • What is the level of difficulty of obtaining injunctive relief when trade secrets are violated?
  • Where does the intersection of trade secrets and false advertising lie?
  • How should trade secret audits be conducted

Course LeaderR. Mark Halligan, Partner, Nixon Peabody, LLP

R. Mark Halligan is an accomplished trial lawyer who focuses his practice on intellectual property litigation and complex commercial litigation in federal and state courts throughout the United States.

An experienced patent litigator, Mark has also developed an extensive practice as an intellectual property litigator focused on protection and enforcement of trade secrets. Mark has successfully represented both individuals and corporations as plaintiffs and defendants in federal and state courts in the United States.

Mark is a frequent lecturer on intellectual property issues and he serves on the adjunct faculty of John Marshall Law School in Chicago, where he teaches trade secrets law. Mark also serves on the AIPLA AMICUS committee as well as the Executive Committee of the United States Group of the International Association for the Protection of Intellectual Property (AIPPI). He was the co-chair of the Q215 Committee on Trade Secrets at the recent AIPPI World Congress in Paris.

Course Length: Approx. 1.5 hours


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