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.

Awareness

  • What does management think its trade secrets are?
  • Does the company have trade secrets that it did not know existed?
  • What do the company’s employees, customers, suppliers, and innovators think that the company’s trade secrets are?
  • Does the company know the relevant law and regulations regarding trade secrets?
  • Who in the company (or its customers or suppliers) needs what kind of education about trade secrets?
  • What are the meta-data about the secrets known and uncovered during the audit?

Agreements

  • What agreements refer or relate to the identified trade secrets?
  • How do those agreements protect those secrets?
  • Do those agreements need to be altered in light of best practices or changes in the company’s business?
  • Do new agreements need to be drafted to cover situations and secrets not previously accounted for?
  • How, without prejudicing the company’s current protections, can any alterations or new agreements be enacted?

Employees

  • Who are the employees and other contracted people (suppliers, customers, contractors, visitors) that have access to and control over the company’s trade secrets?
  • What conditions were placed on each employee’s and contracted person’s access to each trade secret?
  • What agreements govern employees’ and other contracted people’s access and use of trade secrets?
  • What policies are the company’s policies with respect to trade secrets? Do they need to be adjusted in light of best practices?
  • What are the procedures in place at the company to ensure compliance with its policies on trade secrets? Do they need to be adjusted in light of best practices?

Tools

  • What tools does the company have, currently, to maximize trade secret protection?
  • Acquire or develop trade secret management tools to track associated meta-data.
  • Integrate trade tools into other relevant company tools including any human resource and document management tools.
  • Acquire or develop tools to protect the company from cyber-security threats and better keep track of the location of its trade secrets.
  • Acquire tools that will increase both the physical security of company premises and the security of company networks and servers.

Monetization

  • Create valuations for company trade secrets using recognized economic measures of IP value.
  • Explore options to gain tax advantage through IP-related vehicles like patent boxes.
  • Explore using trade secrets as collateral for a loan or insurance policy.
  • Devise a monetization strategy that leverages safeguarded trade secrets in ways that bring additional, concrete value to the company.

This post only represents an overview — join me next time for some specific insight as to how you should look after your trade secrets.

David L. Cohen

David L. Cohen, Esq.

David L. Cohen, P.C. – Kidon IP
123 West 93rd Street
New York, NY 10025
dl.cohen.pc@kidonip.com
(917) 596-1974