Missing Trade Secrets?  

POSTED BY Bruce Story AT 3:45 P.M. SEP 8, 2011

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Missing Trade Secrets?If you are like most technology managers, you know you have trade secrets in the organization, but you don't know what they are. You know you have to protect "them" from loss, but what are "they"? The fact is your R&D staff and engineers are creating new technology all the time as they solve problems. Sometimes those solutions are patentable and best protected that way, but other times these solutions are impossible to reverse engineer and so are better protected as trade secrets, e.g. the formula for Coke®.

The government says that in order to be protectable as a trade secret it must be the subject of reasonable efforts to maintain its secrecy. This can include: 1) revealing them to outside parties only under non-disclosure agreements, and 2) putting employees on notice of the existence and nature of confidential information and their contractual duty to not disclose it, etc.

Some companies have found it useful to have a trade secret inventory, so that they can manage and protect them better. The total intellectual property value of a company is typically tied up in its patents, trade secrets, trademarks, copyrights and brand. You have an inventory of your patents, trademarks, copyrights and brand. Doesn't it make sense that you are better able to value your trade secrets if you know what they are?

The challenge comes in how to do this inventory. No one has time to do it or even know how to go about it. The R&D staff and engineers are too busy with trying to meet their project goals, move to new projects, or fighting "fires" instead of having time to document their trade secrets let alone their patentable inventions.

You can meet this challenge by proactively harvesting trade secrets from the R&D and engineering staff. This has to be a pull exercise rather than a push or it will never happen. ipCapital Group uses the process initially developed at IBM to harvest inventions, including trade secrets, in targeted technologies. The systematic process includes asking specific questions of key technical staff to extract inventions across four dimensions. The inventions are captured in a proprietary software tool. The inventions are then analyzed across many parameters. The client's IP Review Committee can then readily review a prioritized list of inventions for determining which ones should be filed as patent applications and which ones should be protected as trade secrets. Finally, the trade secrets are labeled and filed as such in the IP database.

If you would like further explanation of how proactive trade secret harvesting could work in your organization please contact Bruce Story at bstory@ipcg.com or phone (802) 859-7800 ext 212. More information can be found at www.ipcg.com

TAGS: Bruce Story | IAM | Process | Trade Secrets