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Trade Secrets

by James Pooley, Daniel P. Westman, and Other Contributors

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“James Pooley is a well-known and highly regarded attorney, and this book shows why.  It is comprehensive ... and regularly updated. All in all, a winning combination.”
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Trade Secrets has been cited prominently in the first major trade secrets study by an international organization, the OECD's "Approaches to Protection of Undisclosed Information (Trade Secrets)."

With the economy ever more dependent on technology and innovative markets and with creative employees and executives moving from job to job with increasing frequency, understanding trade secret law is more important than ever. Existing companies must identify and protect their assets, while entrepreneurs and new businesses must know the safest way to get started.

Fortunately, you can consult Trade Secrets book and CD, a comprehensive yet concise guide to this complex field. No other treatise offers as much detailed coverage and thoughtful commentary in such a straightforward, accessible package. Trade Secrets provides not only a general overview of the governing laws and leading cases, but also practical advice and case citations for a host of situations—from invention assignments to non-competition covenants. You'll learn about conflict avoidance and what information can and cannot be protected. You'll find detailed explanations of internal policies, information protection plans, and negotiation strategies you can adopt to avoid disputes. The treatise is a suitable reference for those unfamiliar with the field as well as for intellectual property experts.

This timely resource for the Information Age features a wealth of forms—entire agreements, individual contractual provisions, checklists, pleadings, suggested letters, and more—also provided on CD-ROM, so you can modify them to suit your particular situation. Trade Secrets includes diagrams that help to clarify complex concepts. You'll discover tips and strategies for virtually every aspect of trade secret law, from counseling to negotiation to every phase of litigation. Whether your work involves multinational corporations or a small, entrepreneurial business, whether your concern lies with protecting a company's information or with protecting departing employees, Trade Secrets is a book you will want to have close at hand.

Trade Secrets has been cited prominently in the first major trade secrets study by an international organization, the OECD's "Approaches to Protection of Undisclosed Information (Trade Secrets)."

Book #00641; looseleaf, one volume, 848 pages and one CD-ROM; published in 1997, updated as needed; no additional charge for updates during your subscription. Looseleaf print subscribers receive supplements. The online edition is updated automatically. ISBN: 978-1-58852-078-4.

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  • Availability: Available
  • Brand: Law Journal Press
  • Product Type: Books
  • Edition: 0
  • Page Count: 848
  • ISBN: 978-1-58852-078-4
  • Pub#/SKU#: 641
  • Volume(s): 1

Author Image
  • James Pooley
James Pooley is an experienced trial lawyer and partner in the Palo Alto office of Morrison & Foerster LLP. He is an internationally recognized expert in trade secret and patent law and business strategy. He is currently serving as Deputy Director General for Patents at the World Intellectual Property Organization in Geneva, Switzerland. Besides this work, Mr. Pooley is known for his guidebook for nonlawyers Trade Secrets: A Guide To Protecting Proprietary Business Information, first published in 1982. He teaches advanced courses in trade secret law, and appears frequently as a speaker before legal, security and other professional groups. He is a past chair of the Trade Secret Law committee of the American Intellectual Property Law Association, and has been appointed many times as a special master and mediator in federal and state courts dealing with trade secret and patent matters.


Author Image
  • Daniel P. Westman
Daniel P. Westman is a partner with Morrison & Foerster LLP in McLean, Virginia.


Author Image
  • and Other Contributors

CHAPTER 1
Overview

§ 1.01 Definition of Trade Secret
§ 1.02 Policies Underlying Trade Secret Law
[1]  Generally
[2]  Commercial Morality
[3]  Investment in Research
[4]  Exploitation of Knowledge
[5]  Privacy
[6]  Mobility of Labor
[7]  Free Competition
[8]  Confidence vs. Property
§ 1.03 Development of Trade Secret Law
[1]  Roots in the Industrial Revolution
[2]  U.S. Common Law

CHAPTER 2
Sources of Law

§ 2.01 Case Law
[1]  Generally
[2]  U.S. Supreme Court
§ 2.02 Restatement of Torts
[1]  Generally
[2]  Nature of Trade Secrets
[3]  Continuing Relevance
§ 2.03 Uniform Trade Secrets Act
[1]  Background
[2]  Definition of Trade Secret
[3]  Definition of Misappropriation
[4]  Remedies
[5]  Limitations
[6]  Effect on Other Laws
[7]  Acceptance by the States
§ 2.04 Restatement (Third) of Unfair Competition
[1]  Background
[2]  Definition of Trade Secret
[3]  Misappropriation
[4]  Remedies
[5]  Federal Common Law


CHAPTER 3
Interface With Other Laws

§ 3.01 Patent
[1]  Generally
[2]  Patentable Inventions
[3]  Best Mode
[4]  Preemption
[5]  Choosing Form of Protection
§ 3.02 Copyright
[1]  Generally
[2]  Preemption
[3]  Protection of Software
[4]  Combined Copyright/Trade Secret Protection
§ 3.03 Other Federal Laws
[1]  Trademark
[2]  Antitrust
[3]  Mask Work
[4]  RICO
[5]  Computer Fraud and Abuse Act
[6]  False Claims Act
[7]  Tariff Act of 1930
§ 3.04 State Laws
[1]  Generally
[2]  Unfair Competition
[3]  Breach of Contract (Nondisclosure Agreements)
[4]  Breach of Confidence
[5]  Misappropriation
[6]  Conversion
[7]  Unjust Enrichment
[8]  Breach of Fiduciary Duty/Duty of Loyalty
[9]  Interference

CHAPTER 4
Elements of a Trade Secret

§ 4.01 Generally
[1]  Basic Definitions
[2]  Breadth of Coverage
[3]  Boundaries of Coverage
§ 4.02 Protectable Information
[1]  Technical Secrets
[2]  Business Secrets
[3]  Research and “Negative” Data
§ 4.03 Novelty
[1]  Generally
[2]  Compilations and Combinations
[3]  Protection for Ideas
§ 4.04 Secrecy
[1]  Generally
[2]  Degree of Secrecy Required
[3]  Effect of Disclosure
[4]  Ready Ascertainability
§ 4.05 Competitive Advantage (Value)
[1]  Generally
[2]  Proof of Value

CHAPTER 5
Rights In Trade Secrets

§ 5.01 Ownership
[1]  Generally
[2]  Employee Relationship
§ 5.02 Reverse Engineering
[1]  Generally
[2]  Reverse Engineering as Proper Acquisition
[3]  Reverse Engineering in Litigation
[4]  Reverse Engineering Techniques
[5]  Discouraging Reverse Engineering

CHAPTER 6
Misappropriation

§ 6.01 Generally
§ 6.02 Acquisition By Improper Means
[1]  Liability for Wrongful Acquisition
[2]  What Constitutes “Improper Means”
§ 6.03 Unauthorized Use or Disclosure
[1]  Generally
[2]  Confidential Relationship
[3]  Direct Use
[4]  Indirect Use (Derivation)
[5]  Disclosure
§ 6.04 Acquisition By Accident or Mistake
[1]  Appropriation Without Knowledge of Secrecy
[2]  Accidental Disclosure
§ 6.05 Particular Situations
[1]  Prospective Purchaser of Business
[2]  Prospective Licensee

CHAPTER 7
Remedies

§ 7.01 Generally
§ 7.02 Provisional Remedies
[1]  Seizure and Return of Property
[2]  Injunction
§ 7.03 Remedies at Trial
[1]  Injunction
[2]  Damages
[3]  Punitive Damages
[4]  Attorneys’ Fees

CHAPTER 8
Contracts

§ 8.01 Introduction
§ 8.02 Nondisclosure Agreements
[1]  Generally
[2]  Importance of Written Agreements
[3]  Implied Agreements
[4]  Permissible Scope
[5]  Form: Basic Nondisclosure Agreement
[5A]  Form: “Residuals” Clause for Basic Nondisclosure Agreement
[6]  Form: Basic Nonconfidentiality Agreement
[7]  Form: Employee Confidentiality Agreement (Short Form)
[8]  Form: Consultant Agreement
[9]  Form: “Residuals” Clause for Consultant Agreement
[10]  Form: Provision Regarding Personally Owned Technology
§ 8.03 Invention Assignments
[1]  Generally
[2]  Post-Employment Inventions
[3]  Form: Employee Confidentiality and Invention Assignment Agreement
§ 8.04 Noncompetition Agreements
[1]  Generally
[2]  Consideration
[3]  Reasonableness
[4]  Partial Enforcement
[5]  Defenses
[6]  Statutes
[7]  Choice of Law
[8]  Nonsolicitation
[9]  Forfeiture of Benefits
[10]  Preparations Before Covenant Expires
[11]  Form: Provisions for Post-Employment Restrictions on Competition
§ 8.05 Handling Trade Secrets of Others
[1]  Generally
[2]  Unsolicited Ideas
[3]  Form: Unsolicited Idea Response and Agreement
[4]  Form: Vendor’s Agreement on Joint Development with Customer
§ 8.06 Licenses
[1]  Generally
[2]  Form: Prospective Licensee Letter Agreement
[3]  Limitations Imposed by Antitrust and Patent

CHAPTER 9
Prevention: Protecting Secrets and Avoiding Lawsuits

§ 9.01 Introduction
§ 9.02 Protection Programs
[1]  Generally
[2]  Creating a Trade Secret Protection Program
[3]  Elements of a Trade Secret Protection Program
§ 9.03 Inventory and Audits
[1]  Generally
[2]  Benefits and Risks
[3]  Structure
[4]  Issues to Audit
[5]  Review Audits
§ 9.04 Employee Issues
[1]  Hiring
[2]  Contracts
[3]  Form: Employee Compliance Certificate
[4]  Education
[5]  Form: Information Protection Guidelines for Employees
[6]  Termination
[7]  Consultants and Temporary Employees
§ 9.05 Third Party Issues
[1]  Customers and Vendors
[2]  Protecting Information Belonging to Others
[3]  Joint Development of Trade Secrets
[4]  Competitive Intelligence
§ 9.06 The Employee’s Perspective: Preparing to Compete
[1]  Generally
[2]  Planning to Leave
[3]  Customers and Employees
[4]  Leaving with Grace
[5]  Developing Technology After Departure
[6]  The Threat of Dispute

CHAPTER 10
Preparing For Litigation

§ 10.01 Introduction
[1]  Background of Trade Secret Litigation
[2]  Plaintiff’s Preparatory Strategy
[3]  Defendant’s Preparatory Strategy
§ 10.02 Plaintiff’s Prelitigation Issues
[1]  Generally
[2]  Defining Objectives
[3]  Case Analysis
[4]  Costs of Litigation
[4A]  Warning Letter
[4B]  Cease and Desist Letter
[5]  Injunctive and Other Immediate Relief
[5A]  Form: Temporary Restraining Order and Order to Show Cause re Preliminary Injunction, with Application Therefor
[6]  Criminal Prosecution
§ 10.03 Defendant’s Preliminary Issues
[1]  Defining Objectives
[2]  Case Analysis
[3]  Responding to a Threat Letter
[4]  Initial Response to Litigation
§ 10.04 ADR and Settlement
[1]  Generally
[2]  Pre-Dispute Agreements
[3]  Moving Litigation Into ADR
[4]  Settlement Agreements
[5]  Form: Settlement Agreement
§ 10.05 Insurance Issues
[1]  Insurance Coverage
[2]  Strategies Regarding Insurance
§ 10.06 Investigation
[1]  Generally
[2]  Process of Investigation
[3]  Form: New Case Investigation Checklist
§ 10.07 Complaint
[1]  Generally
[2]  Court
[3]  Parties
[4]  Personal Jurisdiction
[5]  Conflicts of Law
[6]  Form: Complaint
§ 10.08 Response to Complaint
[1]  Removal
[2]  Motions Directed at the Complaint
§ 10.09 Defenses
[1]  Generally
[2]  Statute of Limitations
[3]  Other Defenses
§ 10.10 Counterclaims

CHAPTER 11
Pretrial Issues

§ 11.01 Discovery Strategy
[1]  Generally
[2]  Third Party Discovery
[3]  Discovery Motion Practice
[4]  Criminal Issues
[5]  Electronic Discovery
§ 11.02 Identification of Trade Secrets
[1]  Background
[2]  Existing Standards
§ 11.03 Protective Orders Governing Discovery
[1]  Generally
[2]  Limitation to Counsel and Outside Experts
[3]  Access by Inside Counsel
[4]  Access by Patent Counsel
[5]  Protection of Third Party Information
[6]  Public Interest and Access
[7]  Modification of Protective Orders
[8]  Compliance Issues
[9]  Form: Stipulated Protective Order
§ 11.04 Experts and Consultants
[1]  Generally
[2]  Technical Experts
[3]  Damages Experts
[4]  Litigation Consultants
[5]  Court Experts and Masters

CHAPTER 12
Trial

§ 12.01 Trial Strategy
[1]  Generally
[2]  Advocacy
§ 12.02 Maintaining Secrecy
§ 12.03 Jury Issues
[1]  Judge or Jury
[2]  Jury Selection
[3]  Motions In Limine
[4]  Jury Instructions
[5]  Form: Jury Instructions
[6]  Form: Special Verdict
§ 12.04 Burdens of Proof and Persuasion
[1]  Generally
[2]  Specific Issues

CHAPTER 13
Criminal Law

§ 13.01 Generally
§ 13.02 State Statutes
§ 13.03 Federal Economic Espionage Act
[1]  Background
[2]  Definition of a Trade Secret
[3]  Prohibited Conduct
[4]  Penalties and Remedies
[5]  Territorial Coverage
[6]  Practical Impact
[7]  Text of the Act
§ 13.04 Avoiding Criminal Exposure
[1]  Generally
[2]  Who Should Create a Compliance Plan
[3]  Objectives of a Compliance Plan
[4]  Elements of a Compliance Plan
§ 13.05 Strategy Issues
[1]  Generally
[2]  Making a Criminal Referral
[3]  Defending a Criminal Charge
[4]  Suspected Theft by Company Employees

CHAPTER 14
Dealing With the Government

§ 14.01 Generally
§ 14.02 Disclosure to the Government
[1]  Disclosure in Connection with Procurement and Licensure
[2]  Compelled Disclosure
§ 14.03 Disclosure and Use By the Government
[1]  Generally
[2]  Freedom of Information Act
[3]  Preventing Disclosure or Use
[4]  Remedies for Improper Disclosure or Use
[5]  Form: Sample FOIA Request

CHAPTER 15
International

§ 15.01 Generally
§ 15.02 Harmonization and Treaties
[1]  Generally
[2]  NAFTA
[3]  GATT TRIPs
§ 15.03 Transaction Strategies
[1]  Background
[2]  Protecting Trade Secrets Abroad
§ 15.04 Litigation Strategies
[1]  Generally
[2]  Procedural Issues
[3]  International Trade Commission
§ 15.05 Selected Foreign Jurisdictions
[1]  Generally
[2]  North and South America
[3]  Asia
[4]  Europe

Index