Trade Secret Theft in China

I am delighted that a short paper of mine (co-authored with Donal O’Connell) on the subject of ‘Trade Secret Theft in China’ has been posted on the IP Strategy blog. The paper briefly explains trade secrets before then describing the various scenarios in which foreign companies may find themselves. We suggest that some of the scenarios described are clear examples of trade secret theft but others less so, if not at all.   Any and all feedback is most welcome.

A Rotten Apple Standard

Well it finally happened.  Notwithstanding the settlement with Apple, the district court overseeing the FTC’s case against Qualcomm issued a blistering, 233 page opinion against Qualcomm’s SEP licensing practices.  Some have argued that this ruling is just one more step in Apple’s long play attempts to kill SEP licensing – the technology that has put the “phone” into the iPhone.  To better understand this claim it is worth looking back at Apple’s history with respect to SEPs.

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HR and Trade Secret Asset Management

by David Cohen and Donal O’Connell

Trade Secrets:

While the laws governing trade secrets differ slightly from country-to-country, common among nearly all these laws is that a trade secret is any information that is:

  • Not generally known to the relevant business circles or to the public. The information should also not be readily accessible.
  • Confers some sort of economic benefit on its owner. This benefit must derive specifically from the fact that it is not generally known, and not just from the value of the information itself. It must have commercial value because it is a secret. Commercial value encompasses potential as well as actual value.
  • It must have been subject to reasonable steps by the rightful holder of the information to keep it secret. What is reasonable can vary depending on the specific circumstances.

A trade secret continues for as long as the information is maintained as a trade secret. However, information may no longer be considered a trade secret once it becomes easily accessible, is no longer properly protected or has no commercial value.

Trade Secrets Need People to Exist

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What is a Trade Secret Audit and Why Get One?

What is a Trade Secret Audit and Why Get One? by David L. CohenAt 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 previously given only 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. Read more

Outsourced Manufacturing and Trade Secrets: Contractual Trade Secret Protection Measures (Part 9)

 Outsourced Manufacturing and Trade Secrets: Contractual Trade Secret Protection Measures (Part 9) by David L. CohenAs we have discussed elsewhere, a trade secret audit or assessment is vital if a company is to protect itself during the outsourced manufacturing process. [See these articles: Trade Secret Audits – Why Bother? ; You’ve Decided to Conduct a Trade Secret Audit. Now What?; You’ve Decided to Conduct a Trade Secret Audit. Now What? Part 2 ] Read more

Trade Secret Valuation [Published in Practical Law of Westlaw / Thomson Reuters]

Donal O’Connell and I are very pleased to announce that Practical Law of Westlaw / Thomson Reuters has published a Practice Note of ours related to trade secret valuation.  Click below to view the Practice Note in its entirety.

Trade Secret Valuation (W-019-2083)

Trade Secret Audits [Published in Practical Law of Westlaw / Thomson Reuters]

Donal O’Connell and I are very pleased to announce that Practical Law of Westlaw / Thomson Reuters has published a Practice Note of ours related to trade secret audits.  Click below to view the Practice Note in its entirety.

Trade Secret Audits

Outsourced Manufacturing and Trade Secrets: Controlling the Manufacturing Process (Part 8)

Outsourced Manufacturing and Trade Secrets: Controlling the Manufacturing Process by David L. Cohen

Last time, I discussed outsourced manufacturing as well as the process and personnel. Now, I continue the discussion by exploring control over transactions and products as it relates to IP protection.

Establishing and Maintaining Oversight

Requiring the manufacturer to maintain a designated facility for all work involving the transaction can reduce the risk of violations and simplify the monitoring and protection of the company’s IP. In all cases, the company should reserve the right to frequently audit the manufacturer’s facilities. If possible, the scope of these audit rights should extend enterprise-wide to ensure protection and containment of critical information. Read more

Trade Secret Practice Notes Published

Donal O’Connell and I are very pleased to announce that Practical Law of Westlaw/Thomson Reuters has published two notes of ours on trade secrets.  One note relates to Trade Secret audits and another relates to Trade Secret valuations.

 

Unified Patent’s UnFRANDly Jihad or Trolling at the PTAB

 

After a period of skeptical acquiescence, anti-trust regulators seem to have come around and embraced patent pools for standard essential patents (SEPs.)   The European Commission, no slouch when it comes to regulating SEPs, even remarked that the creation of patent pools “should be encouraged.”  Indeed, one recent study purporting to be the first to empirically analyze the costs and benefits of patent pools estimates that pools save licensees hundreds of millions of dollars in transaction costs.

Notwithstanding the EC’s encouragement, anti-patent advocates, Google & Apple Unified Patents, has decided to engage in a social media and costly litigation campaign to kneecap two high efficiency video coding or HEVC patent pools.  Filing 3 IPRs and 10 IPRs against patents belonging to HEVC Advance and Velos, respectively.  At a cost of between $300,000 to $600,000 per IPR, these IPRs cannot come cheap – even if much of the work is done in-house.  Accordingly, it is worth asking why is Unified trolling HEVC Advance and Velos, especially since there has yet to be any litigation by the owners of the HEVC patents that were IPR’ed.

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