Using IP to Access Funding

Very interesting study from the UK Intellectual Property Office and the British Business Bank about using IPR (at least in part) as collateral for business loans.

Very odd, however, is that there is NO mention of trade secrets at all.  Which is quite surprising actually.  While analyzing trade secrets usage as collateral is (understandably) more challenging that for registered IPR, not to even mention it seems like a major flaw in the study.

Regardless, the conclusion seems promising and there is a lot of data included in the annexes to review.

Although there remain significant challenges to the
development of a sustainable commercial IP-backed loan
product, the lower rates of default and loss amongst
IP-rich firms suggests lenders could at least lower the
cost of lending to IP-rich firms, stimulating demand for
debt in this segment. Likewise there are opportunities to
stimulate the supply of finance by supporting the use of
intangible assets as collateral

Company Director’s​ Duties With Respect to Trade Secret Asset Management

Trade secret’s new found prominence:

As we both have written previously, the changing nature of technology, product development and sales, and the patent enforcement landscape, have given trade secrets a new-found prominence.

Trade secrets are now becoming a much more significant part of a company’s value. As a result, trade secret asset management is becoming (and if not, it should become) a regular part of company board discussions and review.

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Trade Secrets: What Are They Worth?

Owners of intellectual property are often rightfully curious as to the value of their IP. Anyone who has tried to assign a value to patents outside of a litigation context and in the absence of robust licensing market for similar patents knows very well how challenging it is. Figuring out the value of trade secrets, on the other hand, is not (always) as hard.  This is because what most trade secrets “are” on an ontological level are more readily ascertainable that patents. What is in the bills of materials; who are on the customer list; the process for connecting the machinery; the history and results of failed experiments; and last year’s profit margins are all knowable by a company in a way that the scope of a patent is not.[1] Because of this fact, it is much easier for a company to correlate a particular trade secret to the value-add that the trade secret brings to the company’s business. Moreover, whether a trade secret is in fact a protectable right is much more in the hands of the rights-owner that a patent. Patents, globally, have a high invalidation rate from third party prior art,[2] whereas whether trade secrets are generally invalidated only when the owner did adequately protect the trade secret as a secret.

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Trade Secret Audits – Why Bother?

What is a trade secret audit and why get one? At first blush an audit sounds expensive, distracting and unnecessary. Let’s face it, we live in the age of the long tail. Over the past few years, things people would have given a remote chance of coming to pass seem to be happening on a regular basis. What’s more, the pace of change and disruption in business and in the personal world is so great, it is almost impossible to keep up. It seems that whatever you are doing today will have to be radically altered very soon. With all this change most of us are running just to stay in place – so any distraction from the daily chores of simply keeping up needs a powerful justification. I would argue however, that the frenetic pace of business life is precisely why audits are so important. Just as mindfulness is rightly understood as being key to a centered life, trade secret audits are essential to continued success as a business.

A trade secret is anything that has economic value (e.g., gives you a competitive advantage in the marketplace) because it is kept secret. Understood that way, it should be evident that regular stock-taking of a company’s competitive advantages comprises a necessary component of good business practices. Thoughtful companies will utilize these corporate self-assessments – of which trade secret (and more broadly IP) audits are a necessary component – to understand their true growth drivers, both current and anticipated. With the assessments in hand companies can take any actions necessary to better protect and cultivate those growth drivers. The assessments allow companies to proactively course-correct their trajectory in a way that maximize how they utilize their identified competitive advantages.

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The Importance of Trade Secret Metadata at a Trade Secret Misappropriation Court Case

The Importance of Trade Secret Metadata at a Trade Secret Misappropriation Court Case by David L. CohenContrary to popular belief — especially among business owners — trade secrets are not only found in top secret, highly-secure research labs. Rather, almost every business possesses trade secrets, regardless of whether the business is small, medium or large.

A trade secret is anything that is:

  • Not generally known or readily accessible to the relevant business circles or to the public;
  • Gives some sort of potential or actual economic benefit to its owner where the benefit derives from the fact that the thing is not generally known, and not just from the value of the thing itself; and
  • Is subject to “reasonable steps,” depending on the specific circumstances, to keep it secret.

Historically, trade secrets, if even considered, were treated as an afterthought. If there was some sort of non-disclosure agreement on file somewhere, companies were satisfied and turned their attention to patents, copyrights, and designs.

This attitude is changing for a number of reasons.

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You’ve Decided to Conduct a Trade Secret Audit. Now What? Part 2

You’ve Decided to Conduct a Trade Secret Audit. Now What? Part 2 by David L. Cohen{5:35 minutes to read}  We all know what a ‘trade secret’ is, but legally speaking let’s be clear. And how about a ‘trade secret audit’? It’s probably safe to say it’s a review of all policies, procedures, and agreements in place surrounding a company’s trade secrets, to ensure they are in accordance with current best practices, in order to legally protect company intellectual property (IP) and assets.

There are five key areas of focus that a company performing a trade-secret audit must consider as they navigate this crucial undertaking. The following article outlines the five areas in full detail. Read more

You’ve Decided to Conduct a Trade Secret Audit. Now What?

You’ve Decided to Conduct a Trade Secret Audit. Now What? by David L. Cohen{3:10 minutes to read} You decided you need to conduct a trade secret audit. What should you do next?

After getting management buy-in, the most important step is to decide what you hope to achieve with the audit. Broadly speaking, there are five headline goals: Awareness, Agreements, Employees, Tools, and Monetization.

Below are some of the key aspects of the 5 headlines. Read more

Designing and Deploying a Trade Secret Service

David L. Cohen, P.C. is proud to announce its partnering with Chawton Innovation Services to offer trade secret services to both companies and law firms.  For law firms we have jointly developed a white paper on how to design and deploy a trade secret service

Designing and deploying a trade secret service v2DLC

As the Autonomous Vehicle turns….

As if the Uber v. Waymo trade secret case couldn’t get any more dramatic.  I wonder how the lawyer was able to tie in all the allegations into what I understand to be essentially an employment dispute.  Could be crazy stuff if even half of what is alleged is true. TechCrunch posted the complaint to Scribd – it is one long stream of consciousness mess.  I am surprised given the potential for a large payout that the lawyer for the nanny couldn’t at least make the story a little more coherent and organized –

The nanny of former Uber engineer Anthony Levandowski has filed an excruciatingly detailed lawsuit

Silicon Valley entitlement meets the real work, Part 564….

Once again, just because you think you’re a tech company and special doesn’t mean that the law should treat you differently.  . The key issue from the piece: Florida policy requires all state, county and municipal records to be open for inspection and copying by anyone. That’s bad news for Uber, which has fought to exclude its files from public and police view. And now, an appellate court has ruled the company must disclose documents detailing its airport trips and what it paid Broward County for that business.