Fiduciary Duty with respect to Trade Secret Asset Management

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. Director's duties While the precise outlines of company directors’ obligations differ from country to country and by entity

Author: 2 weeks ago

Valuation of IPR is a tricky business

“What’s the value of my IP” is a question that comes up in the mind of a lot of IP owners, enticed by news of lavishly priced IP rights, they would like to see if they can get their IP monetized in a similar lucrative way. For the companies that receive the question whether they can valuate the IP this is not always good news. “It depends”  is mostly not a reply that is welcomed by a hopeful IP owner,

Author: 1 month ago

The process for managing trade secrets

A process is an interrelated set of activities designed to transform inputs into outputs, which should accomplish your pre-defined business objectives. Processes should produce an output of value, they very often span across organizational and functional boundaries and they exist whether you choose to document them or not. A process can be seen as an agreement to do certain things in a certain way and the larger your organization, the greater the need for agreements on ways of working. Your processes

Author: 1 month ago

Engaging Patent Brokers

Suppose you wish to sell your house. Since you seek to sell your house “as-is”, you want to minimize your investment in the selling process and elect not to spruce up your house. To avoid paying a real estate agent commissions, you independently put your house on the market. While some lookie-loos avail themselves of the wine and cheese you serve at your open houses, no serious buyers emerge. The months tick away and, before you know it, you miss

Author: 1 month ago

The best way to learn to cycle is to get on the bike

There's an easy way to learn how to cycle. It basically involves getting on the bike and learning by trial and error. Yes one can read about cycling, watch educational videos, talk to others who can cycle, study all of the components of a bicycle, take a Physics degree, etc. but one should note that one cannot learn to cycle without actually getting on a bike and learning by doing about balance and coordination. Trade secret asset management I suggest that the same

Author: 5 months ago

Trade Secrets 2.0

The enactment of the Defend Trade Secrets Act (DTSA) of 2016 in the United States creates a new paradigm and is a watershed event in intellectual property law. Former U.S. President Barack Obama signed the bill into law on May 11, 2016, and the DTSA now applies to any misappropriation that occurred on or after that date. A trade secret is any technical or nontechnical information that can be used in the operation of a business or other enterprise and

Author: 6 months ago

Time Travel & The Grandfather Paradox

Time travel is the concept of movement between certain points in time, analogous to movement between different points in space by an object or a person, typically using a hypothetical device known as a time machine, in the form of a vehicle or of a portal. Time travel is usually taken to mean that a person’s mind and body remain unchanged, with their memories intact, while their location in time is changed. What has this to do with trade secrets and

Author: 8 months ago

The valuation of IP & Trade Secrets

Any business professor will tell you that the value of companies has been shifting markedly from tangible assets, "bricks and mortar", to intangible assets like intellectual property (IP) in recent years. IP in its various forms is increasingly used as the basis of many business and commercial transactions.  It is fundamental for company valuations (merger, acquisition, bankruptcy); negotiations (selling or licensing); dispute resolution (fair recovery and quantification of damages); fundraising (bank loans and raising capital); assisting in decision making (corporate

Author: 8 months ago

Waardering van intellectuele eigendomsrechten

Geen onderwerp staat zo vaak in de belangstelling als de vraag naar de waardering van rechten van intellectuele eigendom. De opkomst van octrooiveilingen – in 2006 gestart door Ocean Tomo [1] in de VS – heeft in elk geval voor een lichtpuntje gezorgd in het zichtbaar maken van de waarde van een octrooi. Veel is er gezegd en geschreven over de betekenis van immateriële waarde (“intangibles”) van intellectuele eigendom en octrooien in het bijzonder. Zowel in de fiscaliteit als in economische

Author: 8 months ago

Valuation of Intellectual Property: Moving Beyond the Paradox

Intellectual Property (IP) valuation is easily one of the most misunderstood topics surrounding the management of intangible assets. Over the last 20 years we have seen the migration of IP valuation from being a tool for estimating IP damages into more “main stream” applications, and with the explosive growth in IP transactions, the need for assigning a monetary value to IP assets is higher than ever.  Having said that, inside the IP community there is a high degree of frustration

Author: 8 months ago

Can US Trade Secret Law have impact on non-US companies?

The Defend Trade Secrets Act of 2016 (DTSA) created a uniform federal trade secret law on May 11, 2016, in addition to the existing state trade secret laws. The DTSA is important for non US companies because it provides a stronger enforcement mechanism, is applicable against foreign companies, and offers additional options in seizing competitors’ products on an expedited basis. What Qualifies as Trade Secret under the Act To bring an action for misappropriation under the Act, the information allegedly misappropriated

Author: 8 months ago

Trade Secrets Audits

An audit is the examination of a specific aspect of an organization, ideally by someone independent of that organization. The purpose of an audit is to provide independent assurance that an organization's management, governance and processes are operating effectively, and that any associated assets are being properly and professionally managed. An audit is the process of gathering and discussing information from multiple and diverse sources in order to develop a deep understanding of the current situation. An audit is also a

Author: 10 months ago