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DEVELOPING A TRADE SECRET OR OTHER FORMS OF INTELLECTUAL PROPERTY HYATT & WEBER, P.A. By: Stephen B. Stern (410) 260-6585 (301) 261-8550

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Presentation on theme: "DEVELOPING A TRADE SECRET OR OTHER FORMS OF INTELLECTUAL PROPERTY HYATT & WEBER, P.A. By: Stephen B. Stern (410) 260-6585 (301) 261-8550"— Presentation transcript:

1 DEVELOPING A TRADE SECRET OR OTHER FORMS OF INTELLECTUAL PROPERTY HYATT & WEBER, P.A. By: Stephen B. Stern (410) 260-6585 (301) 261-8550 sstern@hwlaw.com www.hwlaw.com

2 1. Derives INDEPENDENT ECONOMIC VALUE, actual or potential, from NOT BEING GENERALLY KNOWN to, and NOT BEING READILY ASCERTAINABLE BY PROPER MEANS by, other persons who can obtain economic value from its disclosed use; and 2. Is the subject of EFFORTS that are REASONABLE UNDER THE CIRCUMSTANCES to maintain its SECRECY A trade secret is any information, including a formula, pattern, compilation, program, device, method, technique, or process, that: Identifying Trade Secrets And Other Confidential Information

3 1. Extent to which the information is known outside the employers business; 2. Extent to which it is known by employees and others involved in the business; 3. Extent of measures taken by the employer to guard the secrecy of the information; Factors to Consider Whether A Trade Secret Exists: Identifying Trade Secrets And Other Confidential Information

4 4. Value of the information to the employer and its competitors; 5. Amount of effort or money expended by the employer in developing the information; and 6. Ease or difficulty with which the information may be properly acquired or duplicated. Factors to Consider Whether A Trade Secret Exists: (cont.) Identifying Trade Secrets And Other Confidential Information

5 Source Code Object Code Business Plan New Type of Technology/Machine Customer List Pricing Information Manufacturing Process Product Design Examples of Trade Secrets May Include: Identifying Trade Secrets And Other Confidential Information

6 Have Employees Sign Employment Agreement Protecting Confidential Information Covenant Not To Compete Onset of Employment Steps to Help Protect Trade Secrets and Other Confidential Information Nondisclosure Duty To Protect Protecting Legitimate Business Interests Reasonable In Scope and Duration

7 Have Employees Sign Employment Agreement Inventions No Solicitation of Employees Return Company Equipment/Files Onset of Employment (cont.) Steps to Help Protect Trade Secrets and Other Confidential Information Work Made For Hire Assignment of Interests Hard Copies Electronic Files

8 During Employment Implement Program To Protect Trade Secrets and Other Confidential Information Steps to Help Protect Trade Secrets and Other Confidential Information Do Not Overreach Number Each Copy, If More Than One Identify and Label Confidential Information Keep Confidential Information On-Site To Address Social Media Issues Maximum Extent Possible

9 Limit Access To Those Who Need to Know During Employment (cont.) Implement Program To Protect Trade Secrets and Other Confidential Information Steps to Help Protect Trade Secrets and Other Confidential Information Keep Area Locked Physically Separate Trade Secrets Require Access Codes If In Separate Room Limit Remote Access

10 Surveillance of Employees During Employment (cont.) Steps to Help Protect Trade Secrets and Other Confidential Information Video E-Mail and Internet Use Telephones Key Stroke Random or Targeted Searches of Employees

11 Collect All Company Property Termination of Employment Steps to Help Protect Trade Secrets and Other Confidential Information Hard Copies and Electronic Versions Prohibit File Copying Equipment (e.g., computer, fax, cell phone, disks) Documents Keep Log of All Items Given and Returned Have Employees Sign Form Confirming Return Security Keys and Passes

12 Terminate Access Termination of Employment (cont.) Secure Hard Drive Steps to Help Protect Trade Secrets and Other Confidential Information Physical Premises Remote Computer Access Voice Mail Look for Record of Copying/Distribution Look for Deletion of Files

13 Stephen B. Stern Hyatt & Weber, P.A., 200 Westgate Circle, Suite 500, Annapolis, MD 21401 phone: (410) 260-6585; fax: (410) 841-5065; email: sstern@hwlaw.com Stephen Stern is a partner in the firms employment, insurance, and commercial litigation practices. In connection with his employment practice, Mr. Stern helps employers minimize exposure to liability by developing and implementing effective employment policies and practices. In this regard, he advises employers on strategic matters, such as trade secret protection programs, non-compete, non-solicitation, and confidentiality agreements, wage and hour practices, privacy issues, independent contractor arrangements, employee handbooks, and document retention practices. In addition, he advises employers on issues that arise on a day-to- day basis, such as leave requests, employee discipline, accommodations for individuals with disabilities, and termination decisions. Mr. Stern also conducts training seminars and investigations into allegations of misconduct. When litigation has been required, Mr. Stern has successfully represented clients in federal and state courts and before federal, state, and local administrative agencies, including the EEOC and Department of Labor. His cases have involved claims under Title VII, ADEA, ADA, FLSA, FMLA, SOX, and similar state statutes. In addition, he has litigated numerous trade secret claims and cases involving non-compete, non-solicitation, and confidentiality agreements, and related tort claims. Mr. Stern also litigates a variety of other contract, tort, and statutory claims. In this regard, Mr. Stern has litigated matters involving consumer protection claims, bank loans, real estate, ownership interests in privately-held companies, unfair competition, fraud, commercial contracts, mass torts, professional discipline, false imprisonment, and civil rights violations. In addition to his law practice, Mr. Stern is involved in community activities, such as Bnai Brith International, for which he serves on the Executive Committee and Board of Governors. Through Bnai Brith, Mr. Stern attends embassy events and policy conferences and he travels to foreign countries to meet with government leaders and members of various communities, among other things.

14 Publications "Strategies for Analyzing and Responding to Sarbanes- Oxley Whistleblower Claims," Chapter in "Complying With Sarbanes-Oxley's Whistleblower Provisions," Aspatore Books (2009) Pleading a Sarbanes-Oxley Act Whistleblower Claim: What is Required to Survive?, The Labor Lawyer (Fall 2007) Employers Need to Be Aware of the Various Laws, Regulations and Common Duties that Govern Apprenticeship Programs, Human Resource Executive, Legal Primer (January 25, 2006) Supreme Court Rules On Evidentiary Matters Involving Mixed-Motive Employment Discrimination Cases, FindLaw Corporate Counsel Center, (in summary) National Law Journal (September 2003), Corporate Counsel (October 2003) Legal Risks of Electronic Surveillance in the Workplace, Maryland Bar Journal (February 1, 2002) Revisiting the 8/80 Rule: Drawbacks and Perk, Baltimore Business Journal (April 1, 2000) Presentations and Speaking Engagements Energy Audit & Retrofit Contract Legalities & Pittfalls, ACI National Home Performance Conference (March 29, 2012) Risks Associated with Social Media, BASE Business Initiative (March 22, 2012) Guidelines for Conducting Effective Investigations, Anne Arundel Society for Human Resource Management (February 16, 2012) Top 5 Employment Issues That Keep HR Managers Awake at Night, Montgomery County SHRM Professional Development Seminar (May 5, 2011) Conducting Effective Investigations, Washington Metro Industry Liaison Group (April 28, 2011) Strategies and Legal Considerations When Conducting Investigations, Northern Virginia SHRM (February 15, 2011) Strategies for Wage & Hour Compliance: How to Avoid the Wave of Wage & Hour Litigation, Northern Virginia SHRM (June 15, 2010) Guidelines for Conducting Effective Workplace Investigations, Montgomery County SHRM (March 17, 2010) Navigating Compliance with the ADA, 6th Annual Maryland SHRM State Conference (December 7, 2009) "How to Protect Your Company in an Economic Downturn," Montgomery County SHRM Professional Development Seminar (May 13, 2009) HRs Role in Protecting Intellectual Property and Confidential Information, 5th Annual Maryland SHRM State Conference (December 4, 2008) Summary of Intellectual Property Law Basics and Expanded Seminar, Motorcycle Industry Councils Annual Meeting (February 15, 2008) Harassment Prevention, American Correctional Association Winter Conference 2008 (January 16, 2008) Compensation Plans: Identifying Potential Liability for Maryland Employers, 2007 Maryland SHRM State Conference (December 4, 2007) Protecting Trade Secrets and Other Confidential Information, 2007 Virginia State SHRM Conference (October 3, 2007) Stephen B. Stern Hyatt & Weber, P.A., 200 Westgate Circle, Suite 500, Annapolis, MD 21401 phone: (410) 260-6585; fax: (410) 841-5065; email: sstern@hwlaw.com


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