BIO 2017: FBI agent and lawyers provide trade secret tips
“There’s one stick with this carrot—the whistleblower protection law,” explained Anne Elise Li, IP counsel at Crowell & Moring, in reference to the Defend Trade Secrets Act (DTSA).
Li, who moderated the panel “Keeping it Under Wraps: Protecting, Asserting and Creating Value from Your Trade Secret” at the 2017 BIO International Convention, explained that companies could only use the act if employment contracts were amended to include whistleblower protections.
The DTSA was brought into US law last year, ensuring trade secrets now have federal protection.
John Hartnett, supervisory special agent and acting unit chief at the FBI, meets companies and attends conferences to help educate people on the value of trade secrets.
“We’re not risk consultants but we try our best to supplement what companies have internally and specifically advise them on the targeting that’s going on. There’s lots of targeting of IP going on and it’s a definite issue for the industry,” he said.
Hartnett explained that at one point, an employee of Coca-Cola did try and sell parts of the secret recipe to Pepsi. Pepsi did come forward and inform the FBI, but not all companies do this, he said.
“Trade secrets are not just an issue for security persons at the firm; you need buy-in from top management, the IT folks,” he said.
Li has been asked by people whether they should just make everything a trade secret.
“The answer is no; you’re diluting whatever your trade secrets are, which makes it very hard to sell what you’re trying to get out on the marketplace,” she said.
Protecting your secrets
Li stated that a number of her clients had disabled the USB ports on computers, as it’s a “great way to prevent trade secrets walking out the door”.
Other options include no personal email in the office, which means that the firm can keep a record of everything that goes out, and watermarking of trade secret documents so that they won’t print.
“The definition of a trade secret is that it’s a secret. The more times you share it, even under confidentiality agreements, it isn’t secret any more,” explained Andy Lewin, vice president of business development at service provider CMC Biologics.
Lewin explained that there are two ways to look at protecting secrets: a contractual and a practical approach.
The contractual approach includes confidentiality and IP assignment agreements, while the practical method includes training employees and restricting access.
Brad Morie, director of business development at Ajinomoto Althea, explained that his company had developed a process, ending up with a trade secret as a result.
“This process that is being performed routinely, it’s not all captured in a certain patent. It can’t be read, scanned and put into a machine to spit out a certain product.”
The 2017 BIO International Convention is taking place in San Diego from June 19 to 22.
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