The first post in this series discussed exactly what defines a trade secret. In many states any piece of information you possess, which has value to your business because it is unknown to the general public and to your competitors, can potentially be a trade secret.
But in order to qualify for protection for your trade secret, you must also take reasonable steps to guard the secrecy of that information. This post will examine how that is accomplished. We also will explore the circumstances under which trade secret protection may be preferable to seeking a patent.
If I Have A Trade Secret, How Do I Protect It?
By its very definition, a trade secret must remain a secret. That means that, as noted above, you must take reasonable steps to maintain the actual secrecy of your trade secret.
What kinds of steps are recommended? To some extent, it depends on the nature of the secret. In every case, you should limit access to and disclosures of the trade secret to those with a need to know, requiring your employees and contractors to sign non-disclosure agreements if they may be exposed to a trade secret.
You also should keep all trade secret materials in a secure place. In the case of secrets that encompass paperwork, the papers should be locked up and marked “CONFIDENTIAL.” If your trade secret is a manufacturing technique or process, you should carefully restrict access to/visibility of the production areas where that method is used.
How Far Must I Go To Maintain Secrecy?
To what lengths must you go to protect the secrecy of your trade secret? Generally speaking, the key word here is reasonableness. You don’t need to take wildly expensive measures to defeat even the most imaginative forms of industrial espionage. The courts usually find such spying constitutes trade secret misappropriation.
In duPont v. Christopher, a famous case arising in Texas, a competitor chartered a plane and flew over the plaintiff trade secret owner’s factory while it was under construction. By taking aerial pictures of the plant in this way, the competitor was able to figure out duPont’s trade secret. duPont sued, and the court held that the trade secret owner need not have taken the extraordinary precaution of preventing airborne espionage while its factory was built – the competitor’s actions were misappropriation of the trade secret.
On the other hand, if your measures are effective in avoiding discovery of your trade secret, you won’t have to go to the expense of litigating to protect it. How extensive your confidentiality measures should be boils down to a judgement call, based on the level of competition your industry.
Why Not Just Get A Patent?
With all the precautions necessary to maintain a trade secret it is reasonable to ask, “Why not just get a patent instead of bothering with all of that?” There are at least two good reasons to use trade secret protection instead of seeking a patent, under the right set of circumstances.
First, patents are expensive and difficult to register. Not everything that might be useful in the competitive arena would qualify for patent protection – in fact, most things would not.
And second, put very simply, patents expire. A patent provides a window of time during which the patent owner has a complete monopoly over the manufacture and use of the patented invention. Once the patent expires, the invention falls into the public domain and anyone can make or use that invention. So a patent is basically a trade-off – you’re trading long-term exclusivity for the absoluteness of the patent monopoly.
Trade secret protection, by contrast, is easier to arrange. And, if you take the proper precautions, you may be able to exploit your trade secret forever – it has no automatic expiration date, in any event.
Get Legal Advice
If you think you may have a trade secret and want to protect it, it is a very good idea to consult an attorney with experience in trade secret law. That attorney can help you set up the appropriate safeguards and precautions in order to maintain the secrecy of your trade secret.