Structuring Agreements to Preserve Trade Secrets: Employment Agreements, Non-Disclosure Agreements, and Licenses
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE webinar will guide IP counsel on structuring agreements to preserve trade secrets and avoid pitfalls which can result in the trade secrets entering the public domain. Recently, the Court of Appeals for the Ninth Circuit decided that a poorly drafted non-disclosure agreement allowed a competitor to freely use the trade secrets. Furthermore, due to the improperly worded agreement, the court overturned an award of $78 million in favor of the trade secret owner. The panel will address key provisions for trade secret agreements including employment agreements, non-disclosure agreements, and licenses. Also, the panel will offer best practices for structuring such agreements. In addition, the panel will discuss identifying and safeguarding trade secrets.
Outline
- Trade secret agreements: key provisions
- Definitions
- Restrictions on use
- Restrictions on disclosure
- Term and termination
- Obligations after termination
- Identification of trade secrets
- Techniques for safeguarding trade secrets
- Discussion of recent cases
- Best practices for structuring agreements
Benefits
The panel will review these and other key issues:
- When in transactions involving trade secrets, what steps should companies and their counsel take to protect their trade secrets?
- What are the key provisions to include in trade secret agreements?
- What are best practices for structuring trade secret agreements?
Faculty
John M. Augustyn
Shareholder
Leydig Voit & Mayer
John Augustyn successfully represents clients in high stakes intellectual property litigation, agreements, client... | Read More
John Augustyn successfully represents clients in high stakes intellectual property litigation, agreements, client counseling, and prosecution. Leveraging his prior experience in management and as an engineer at Fortune 100 companies, John understands that IP and business issues require creative and cost effective legal solutions. He has authored several articles and chapters for books, has appeared on multiple television and radio programs, has taught law school classes, and has provided over 30 CLE programs to thousands of corporate and outside counsel. His legal success has been recognized by selection to Best Lawyers, Super Lawyers, IAM Patent 1000, Top 100 High Stakes Litigators, Fellow to Litigation Counsel of America, and other honors. Please click on his photo above for more information.
Litigation
John has been lead counsel in patent and trade secret litigations throughout the country at the trial and appellate levels. He also has been lead counsel in Post Grant proceedings at the USPTO and coordinated post grant proceedings in other countries. In addition, he has litigated cases at the International Trade Commission. His litigation experience has involved several areas, including electronics, magnetics, sensors, control systems, medical devices, automotive, and consumer products.
Opinions
John counsels and renders opinions on patent infringement and invalidity including major product launches in competitive patent landscapes. These opinions often involve large patent families with multiple US patents and with existing litigations and patent office proceedings throughout the world.
Patent Prosecution
He has extensive experience in formulating patent strategies and managing patent portfolios. John manages the US and non-US patent prosecution for several international corporations. He has prepared or supervised the preparation of over 1000 US original patent applications and oversaw the prosecution of over 3000 non-US patent applications.
Due Diligence
John performs due diligence for mergers and acquisitions. The due diligence involves an analysis of the patents, trademarks, trade secrets, licenses, agreements, products, services, manufacturing processes, software, marketing, and standards by standard setting organizations.
IP Agreements
He successfully negotiates and prepares agreements relating to well-known products and brands for both the seller/ licensor and the buyer/ licensee, including patent licenses, technology licenses, trade secret agreements, joint venture agreements, trademark agreements, and research and development agreements.
Trade Secrets
John advises clients on trade secret matters including: litigating trade secret cases, negotiating trade secret agreements, advising clients on the best techniques for protecting their trade secrets, and helping clients decide whether to use trade secret versus patent protection.
Dave S. Christensen
Partner
McCarter & English
Mr. Christensen’s IP practice focuses on assisting clients in protecting their inventions in both U.S. and... | Read More
Mr. Christensen’s IP practice focuses on assisting clients in protecting their inventions in both U.S. and foreign patent offices in a variety of technical fields, including optics, additive manufacturing, aerospace systems, consumer and industrial products, and renewable energy systems. He also has significant experience in assisting clients in developing cost effective strategies for managing risk in their developing of new products, and the building and managing their IP. Mr. Christensen further counsels startup to medium-sized clients in preparing their portfolios for investment financing and associated due diligence activities. He is active in thought leadership, especially related to how technology is changing both manufacturing and legal business operations and regularly presents at webinars and authors articles on a variety of law practice management and IP topics.
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Peter J. Toren
Shareholder
Anderson Kill
Mr. Toren represents clients in patent litigation involving a variety of technologies including computer software... | Read More
Mr. Toren represents clients in patent litigation involving a variety of technologies including computer software and hardware, light emitting diodes, biotechnology, semiconductor manufacturing and fabrication, optics and medical devices as well as business methods. He has successfully obtained and defended motions for preliminary injunctions and summary judgment motions involving the Patent Act, Copyright Act, Lanham Act, Digital Millennium Copyright Act and Computer Fraud and Abuse Act. In addition to intellectual property litigation, Mr. Toren has experience in computer law, including cybersecurity. He is a former federal prosecutor with the Computer Crime and Intellectual Property Section of the Criminal Division of the United States Department of Justice where he worked for over eight years and also served as Acting Deputy Chief.
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