Speaker 1  0:00  
Good afternoon. Welcome to Academic institutions also have secrets, avenues for protecting trade secrets in publish or perish environments presented by Autumn. My name is Holly Lundgren autumns online professional development manager and I'll be your staff host for today. All lines have been muted to ensure high quality audio, and today's session is being recorded. If you have a question for the panelists, we encourage you to use the q&a feature rather than the chat feature. If you have a technical question or comment, please do feel free to use the chat feature for that. Today's session may be eligible for CLE depending on your state. Throughout the webinar, you will see pop up surveys that are simply asking for a yes or no answer. If you do not intend to apply for CLE credits, you may simply dismiss the poll. If you do intend to apply for CLE credit, you must answer the question in the time that it is answered. For more information about CLE eligibility, please contact me at h lundergan@autumn.net. I'd like to take a brief moment to acknowledge and thank autumns 2020, online professional development sponsors. We appreciate the ongoing support. And now I'll introduce today's speakers. Frank Kamini is an attorney in Winstead intellectual property practice group with substantial experience in patent prosecution, intellectual property licensing, and related intellectual property transactions. Frank has written and prosecuted numerous patent applications in various technological areas including material science, nanotechnology, biotechnology, the life sciences and the chemical arts. Frank has drafted and negotiated numerous intellectual property license agreements related to the commercialization of numerous technologies including medical diagnostics, medical devices, fluid purification processes, software and databases. Frank has also drafted and negotiated numerous agreements related to intellectual property transaction, including master services agreements, consulting services agreements, nondisclosure agreements, facilities use agreements and asset purchase agreements. Frank earned his BA in microbiology at the University of Texas at Austin, his PhD in biological, biological chemistry at UT SW and his Juris Doctor at the Chicago Kent College of Law. Like a Gopala Krishnan sorry, Leica is a member of Winstead intellectual property practice group. Her practice focuses on all areas of intellectual property law. Leica has extensive experience with patent prosecution matters in the chemical and biological arts as well as rendering opinions regarding patentability, patent infringement and patent eligibility valid validity. Additionally, she has counseled clients in matters relating to trademarks and copyrights, including procurement and and enforcement, technology licensing, due diligence and freedom to operate investigations of patent portfolios and litigation matters involving patents, trademarks, and copyrights. She also counsels clients in navigating compliance related issues with the FDA and state authorities for manufacturing and marketing of drugs and medical devices. Lika earned her BSc in nutrition and dietetics dietetics at University of Madras, her MS in chemistry at the University of Texas at Arlington, her PhD in Cell and Molecular Biology at Northwestern University, and her Juris Doctor at the University of Texas in Austin. So without further ado, at this time, I'll turn it over to our distinguished speakers. Welcome.

Speaker 2  3:44  
Thank you, Robbie. Let me let's see, let me share my screen here with the slides.

Speaker 2  4:02  
Great well guys, as Holly mentioned, today, we're going to talk about how, how to protect trade secrets, and publish or perish environments which represent academic institutions. And before I begin, I'd like to acknowledge that university derived inventions are complex by a couple of hypothetical examples. This first hypothetical example is a process for determining susceptibility to a disease by for instance, obtaining the tissue from a patient suite, sequencing numerous genes and then utilizing a proprietary software to analyze the sequences and determining the susceptibility of a patient to a particular disease, and then using that information to devise a specific and tailored treatment plan. Here's another hypothetical example of a university derived invention, which involves the purification of compounds and their use in disease treatment. For instance, in this hypothetical example, you have a plant that you process through a proprietary extraction method to extract compounds from the plant. And then you use a proprietary software to to basically characterize and test the compounds and identify them and determine whether or not they have therapeutic effects, including safety and efficacy. Thereafter, you produce drug formulations, and then use the drug formulations to treat a disease or a condition. These are hypothetical examples. And my apologies for anybody who's skilled in these fields if I botch these hypothetical examples in any way, but the points of these hypothetical examples are that university derived metrics are complex. They involve different research goals and tasks. They involve multiple steps. They involve different personnel at different times who come and go from the institution. And they involve frequent public disclosure of numerous aspects of the inventions through such as journal articles, posters, abstracts, and conferences. In general, not always, in general IP protection guidelines, usually focus on patent protection, which involves no public disclosure until a patent applications filed. That's a great guideline, which should be followed. However, oftentimes, trade secret protection may be overlooked in universities. And the purpose of this presentation is not to advocate for, or dissuade from using trade secrets to protect University derived inventions. Rather, the purpose of this presentation is to basically educate the audience on the availability of trade secrets as a protection option for protecting University derived inventions. With that said, I will turn the presentation over to Lake to provide a overview of trade secrets.

Speaker 3  7:53  
Thank you, Frank. And thank you, Holly, for your kind introduction. So trade secrets. Rank, can you advance it to the next one? Absolutely. Just go ahead and load the entire slide.

Speaker 2  8:10  
Absolutely. So, just let me know when to turn. I will thank

Speaker 3  8:14  
you. So trade secrets are generally defined as confidential information having commercial value. Under the Defend Trade Secrets Act with the DTSA for short, which was signed into law in 2016. Trade secrets can basically be any kind of information. It can be financial, of a business nature of scientific, technical, economic, or engineering information. It can include patterns, plans, Formula designs, prototypes, basically any kind of information regardless of the manner in which it's stored, as well as whether or not the information is tangible. The main issue with trade secrets or the concern that one needs to have is that that the information whatever it might be, is kept confidential, and that the owner has taken reasonable efforts to maintain the secrecy. Additionally, this information must be the sort of information that derives independent economic value by the by the owner of the trade secret by virtue of not being disclosed or being easily ascertainable by the public. So those are the two prongs of trade secrets, one that they be confidential, and that they have commercial value. And if that is the case, then any type of information arguably could qualify as a trade secret. Next slide. So the DTSA the Defend Trade Secrets Act allows an owner of a trade secret to sue in federal court when its trade secrets have been misappropriated. And it underscores Congress's desire to align closely with the Uniform Trade Secrets Act, which, prior to the enactment of DTSA was the manner in which trade secret enforcement occurred. And pretty much every state has some version of the Uniform Trade Secrets Act. Available in its statutes. the DTSA extended the Economic Espionage Act, which criminalized trade secrets test. So later on in this webinar, I will I will talk a little bit about the China initiative, which the Department of Justice is now has undertaken, which involves a criminal penalties for certain types of trade secret, fair, so I'll get that get to that in a few minutes here. So from an enforceability standpoint, trade secrets are enforceable, the DTSA has adopted the criminal penalties that were available under the Economic Espionage Act. And these involve boats defined as well as serious jail time as well. In addition, though, the DTSA has a feature that the Economic Espionage didn't and that is it has civil penalties. So a trade secret owner can sue in federal court, when its trade secrets have been misappropriated through improper means. And improper means includes threat theft, bribery, misrepresentation, breach of a duty to maintain secrecy and and espionage. Improper means does not include independent development or reverse engineering or both of which are considered legitimate means to get around a person's IP. About available remedies for was available civil remedies I should say for trade secret theft include an injunction to preserve the evidence and prevent trade secret disclosure, compensatory damages as measured by actual loss and unjust enrichment. Exemplary damages up to two times the amount of damages for willful and malicious misappropriation of trade secrets, and reasonable attorneys fees as well are included in the in the spectrum of civil remedies that are available to a person bringing a trade secret misappropriation lawsuit in federal court. Next slide please. So trade secrets have can have an indefinite life.

Unknown Speaker  13:11  
Get this window.

Speaker 3  13:15  
basic goods can have an indefinite life as long as they are kept secret and confidential. And this means that it is important to take reasonable measures to protect the information and keep it secret. So what are reasonable measures and the tricky part here is that the statute does not provide any bright line guidelines as to what these reasonable measures should be. However, there are various manners in which people can keep their trade secrets confidential. They include, among other things, written agreements, process procedures and policies that go beyond standard business practices. And it's important to note that courts look very closely at what measures an owner of a trade secret has taken in order to determine whether trade secret misappropriation occurred. And this is very important, because if it looks to the court, based on the facts provided that enough reasonable measures were not adopted in keeping the trade secret confidential, the court can and come back and say that this was never protected as a trade secret and therefore trade secret misappropriation remedies do not apply. So since there are no bright line guidelines of the statute, some of the manners in which our trade secrets can be protected and are protected are where a company looks at It's, it's a trade secret portfolio and takes specific protective steps to protect it straight secrets, which which are above and beyond the normal business practices. Confidentiality Agreements can help, but in and of itself that has been deemed to be insufficient, because one has to go beyond the normal business practice of getting a confidentiality agreement executed by by an employee. Some other measures include failing to limit access for departing employees may be deemed to be unreasonable. So one has to take measures to ensure that departing employees do not depart with the trade secret in hand. It's also important to inform the recipient of trade secrets, that they are receiving a trade secret and should guarded accordingly. And essentially, what this means is that there is not a one size fits all approach and every situation where trade secret exists, whether it's in a company environment or university environment needs to be dealt with separately. Next slide.

Speaker 3  16:19  
So, we're going to talk about a couple of cases where a court looked at a trade secret misappropriation claim and determined that the claim was not valid. So in the audit track case, the district court dismissed a company's trade secret misappropriation claim, because based on the facts, the court determined that no reasonable measures were taken to protect the secrecy of the trade secrets and what were these facts. The trade secrets were publicly available, so the company's website, and the trade secrets had been disclosed in the company's patents which had published. So as you can see, this is far from an ideal situation where although the company may have viewed its its information as a trade secret, it did little to protect it the kinds of secrecy that is required for a trade secret to be a trade secret. Next slide. Another case where a company was found to have not protected its trade secrets appropriately is the yellowfin Yachats. case were here the appellate court held that a former employee did not take reasonable measures to protect the confidentiality of certain customer information to warn trade secret protection, because in this instance, although there was some limitation of employee access to the information, using Password protection and other efforts, there was evidently also an encouragement made to the employees to to keep the trade secrets on personal computers and laptops. Employees refusal to sign confidentiality agreements which was condoned by this employer, the information was not marked as confidential in the areas where it was being stored. And there was no active measures taken to instruct employees to not store this confidential information on personal devices. So, again, as you can see, in certain instances, the court is pretty nitpicky about whether or not a piece of information was in fact considered a trade secret by the owner of the trade secrets. So, as we will be talking here in a little bit, it's very important to to ensure that the reasonable measures that are taken, go above and beyond normal business practice and also ensure that the that the measures being taken, allow for the trade secret to be kept confidential and not disseminated in a manner in which people outside the company could argue arguably get access to it. Next slide Frank.

Speaker 3  19:34  
So the next several slides are going to talk about some of the ways in which these reasonable measures for maintaining secrecy of trade secrets can be implemented. So talking about the area of employee agreements and institutional policies, every company every university has has a bevy of agreements and policies C's that are designed to maintain a certain level of order within within the system. And confidentiality agreements are, are very commonplace in both the company in a private company environment as well as university environment. What's important is that these confidentiality agreements be properly and timely executed by the employees. Oftentimes, when it's part of an orientation, and employees being asked to sign a multitude of forms, it's possible that one or more of these might slip through the cracks. So it's important to to stay on top of this procedure and ensure that any and all agreements including confidentiality agreements that must be executed by new employees are timely performed. Also, the policy by which and employees required to disclose and assign trade secrets created by the employee to the institution, there needs to be a good policy that, to that informs the employee exactly how to go about doing it. And that would necessarily involve making sure there was a designated person at the university that was tasked with receiving this information and ensuring that it was being treated with secrecy and confidentiality. Again, to the extent that there are policies regarding trade secrets, it's important to continue updating them based on the current state of the law, and ensure that the employees are receiving and reading these policies, and periodic reminders to employees of these policies is also a good practice to have. Next slide. So relative to trade secrets, it goes without saying that it's important to limit access to it, the fewer people that arguably have access to the information, then the fewer chances there are that the information is going to end up in the wrong hands. So with respect to internal access, so internal access, meaning access within a company or a university, to the company, or universities trade secrets, it's really important to limit the trade secrets only to those employees who need to know about their existence. It's important to maintain detailed records of who has access to trade secrets. And when they have had had access to such information, basically keeping a document log as to who has access to access to trade secrets, and when, and the reason being that if there is ever a claim of misappropriation, it's important to go back to be able to go back accurately in time to determine who who had access to the trade secret and were likely the breach could have occurred. Access of non employees to do the trade secret should be prohibited under all circumstances. And, and a large part of that is making sure that non employees do not have access to nonpublic areas of the institution or company, and which is where the private areas of the company or university or where the trade secret storage should be kept. Next slide. So again, with respect to access, we've talked about internal access with respect to external access. Again, it's important to physically lock, keep under lock and key the trade secret and prevent or limit access to those areas of the institution or company where the trade secrets reside. It's important to label areas of the workplace in within that private area that they contain trade secrets. And again, the labeling is not so much to advertise that the trade secrets are present there as much as to remind people to have access to that area that they need to be very careful about locking up after themselves and ensuring that they're that the that those areas are not made available from an access standpoint to somebody that doesn't belong to the university. Again, requiring third parties like vendors and contractors to execute confidentiality agreements before they receive or are given access to to any information and certainly with respect to trade secrets, and have systems in place that could retain control over the documents, so no ramp and copying or or other, taking photographs off. So it has to be sort of a supervised access so that one can ensure that in legitimate copies are not being made off to off the trade secret information at any time. Next slide. So again, with respect to controlling documents that contain trade secrets, again, limit the number of copies of the documents, label a stamp the documents that contain the trade secrets as being confidential. Use password protection on computers, or other devices that contain trade secrets. And again, it should only be on a limited number of devices in very, very specific and confidential areas of the company or institution. Limit remote access to trade secrets stored in computer files. And, again, as with anything to do with the internet, it's important to have strong firewalls, so that that cannot be breached, so as to prevent the possibility of any hacks from outside of the institution or company that can come in and try to steal trade secrets and other confidential information. So it's also important that when employees leave an institution or a company, that they be, during their exit interviews, that they be effectively informed slash warned that that they should not under any circumstances, leave with any trade secrets, because of the potential consequences that they might face if if a claim is ever brought. They should be reminded, again, it might look like it goes without saying but it's important to have these Express reminders so that people are forewarned, remind departing employees of their obligations to the company or institution as to not to use or disclose the the institution's trade secrets to anybody outside of the company or institution. And if a determination is made, that the trade secrets have been used, without authorization of the owner of the trade secrets, then steps need to be taken immediately to prevent further unauthorized use. So it's important to mitigate any any inadvertent or or deliberate disclosure that may have occurred as a result of departing employees.

Unknown Speaker  27:53  
Next slide please.

Speaker 3  28:13  
So as I mentioned earlier, the the genesis of the Defend Trade Secrets Act is from the Economic Espionage Act of that that was a predecessor to the DTSA. And aspects of this of the DTSA have been used by the Department of Justice in its China initiative, which it has started to combat Chinese economic espionage. And the purpose of the China initiative is to identify and prioritize Chinese trade secret theft cases, ensure that the Department of Justice has sufficient resources to combat this, this type of economic espionage and to conclude them quickly and effectively. So couple of sections of the Defend Trade Secrets Act deal with economic espionage and theft of trade secrets. And these are the statutory basis with which the DOJ has been cracking down on on both private as well as private companies as well as academic institutions in connection with its China initiative. So the China initiative was launched in November 2018. And the reason for the China initiative, as announced by the administration was to was based on previous findings concerning Chinese government's active practice of sponsoring unauthorized computer intrusions as well as its outbound investment policies, including sponsored research, dollars being being provided to academic institutions performing research, in return for which the quid pro quo was to be able to gain access to confidential information rising from that sponsored research. So as a result of the China initiative, there have been more than a dozen criminal prosecutions that have occurred in and these are currently pending in federal courts around the country involving many university faculty members, from from many prominent universities. The there, the allegation being that they either consorted with and collaborated with elements in the Chinese government to in return for monetary value, they they disclosed, confidential and trade secret and proprietary information that they should not have, and also did not report to the federal government that they were receiving the steps of monetary inducements by in the in by way of grants or other sponsored research mechanisms. So, as you can see, because the aspects of the DTSA can be used in enforcement of against, rather, enforcement against possible economic espionage. This is another area where reasonable measures for protecting trade secrets is important to pay mine to pay attention to because it's sort of an offshoot of sort of the normal safeguards that one needs to have is that there's potential criminal liability if the trade secrets end up in the wrong hands. And the DOJ determines as part of its China initiative that that has occurred. So the reasonable measures that we just talked about relative to to trade secrets, is important to keep in mind because it doesn't just apply to what can happen within the institution. It also applies to the possibility of the trade secret, leaving the institution and going outside the country to a foreign country that is being closely watched by our government. I'm not talking to presentation over to my colleague, Frank Meany, who will now be talking about different forms of IP and the advantages of each.

Speaker 2  32:55  
Thank you like. As Linda mentioned, trade secrets provide numerous advantages, remedies and benefits, including compliance with the Department of Justice's China initiative. However, when devising an IP protection strategy in a university, it's important to keep trade secrets within the context of other modes of intellectual property protection, including copyrights, trademarks, and patents. Each each of copyrights trademarks, trade secrets and patents protect different aspects of an invention and choosing trade secrets over other modes of protection needs to be considered on a case by case basis, and shedding some light on what different modes of IP protection cover should provide, hopefully some clarity as to what mode of IP protection may be suitable for university derived inventions. For instance, copyrights in general protect original works of authorship, that are embedded in a tangible medium of expression, the medium of expression being such as pay per print digital media, such as the screen you see here, or even software, quote, and the term of copyrights usually expire seven years from the author's life. copyright registration is not required to confer copyright protection. However, copyright registration provides numerous advantages such as the ability to bring a copyright infringement lawsuit in federal court, and to maximize the amount of damages collected from a infringer. And if a determination is made to register your copyrights with the copyright office, fortunately, the registration process is rather expedited and cost effective. And what copyrights protect is that exclude they help the copyright owner exclude others, from copying, modifying, distributing, performing or displaying the work in view of the nature of copyrights and what they protect. copyrights are generally suitable for protecting various works such as brochures and manuals and in many instances software including software, source code, and other displays of the software such as the graphical user interface. Trademarks protects horses of goods and services, and what trademarks requires that they require the use of the trademark in commerce or the intention to use the trademark in commerce in a distinctive manner. The terms of trademarks can be indefinite as long as the trademark is used in commerce, to trademark registration, just like copyrights is not required. For there to be trademark protection trademarks can be protected by state law and common law. But the federal registration of trademarks provides additional advantages such as the incontestability of your trademark after a certain period of time, as well as the ability to bring the trademark infringement lawsuit in federal court and maximize the amount of damages collected. Unfortunately, however, to trademark registration process is prolonged and costly with the trademark office. In essence, what trademarks protect is that they exclude they can be used by Detroit Mark owner to exclude others from using the mark in relation to the product or services for wishing to mark is registered. So trademarks, in general are suitable for branding purposes. And that includes the protection of business names, phrases, and logos. And it's like I mentioned, trade secrets protect confidential information with commercial value. They broadly protect a lot of different information. And what they require for protection is secrecy, literally secrecy, and the reasonable measures that were discussed to maintain and protect the secrecy. And in fact, that term of trade secrets can be indefinite as long as the secrecy is maintained, and reasonable measures discussed, are implemented. And there is no requirement to file any materials with any offices rather, protection occurs again through secrecy. And in a nutshell, what trademarks what I'm sorry, what trade secrets protect is that trade secret owners can exclude others from improperly using the trade secrets. That means others cannot steal or improperly obtained the trade secrets from this trade secret owner through espionage for instance, or other improper means. However, trade secrets do not protect against independent development or reverse engineering. Therefore, trade secrets are generally suitable for protecting inventions that are not subject to reverse engineering or public disclosure. So for instance, if you have a recipe such as the coke recipe, or a WD 40 recipe that's really hard to reverse engineer, that that may be more suitable for trade secret protection, so long as that recipe is not going to be published in any publications or patent applications for that matter. Or if you have an invention that's easy to reverse engineer, but you can keep it secret, maintain it and keep it a secret, then trade secret protection may be suitable for such inventions. Since also protects a broad subject matter they generally protect inventions, various plants and various designs, unlike trade secrets, which require secrecy has required full disclosure in the patent application. When upon filing, and a patent application eventually gets published and issued at an application issue. This is patent and is basically publicly displayed. And a term of the patent usually expires 20 years from the filing date. So the term unfortunately, it's not as long as the term was trade secrets. And to file a to obtain a patent on an invention you have to go through a prolonged and costly patent prosecution process. But the United States Patent and Trademark Office where you file a patent application and go through The process. And what happens protect is that they exclude others from using selling, importing or making them mentioned, regardless of how others developed or derived invention. So basically, unlike trade secrets, patents, protect against independent development or reverse engineering. So basically, if, if you have a device that's, that's in the public domain, and somebody comes and buys the device and reverse engineers it and you have a patent pending, you can go after the infringer in view of the attributes of patent protection. And protections are generally suitable for inventions that may be subject to reverse engineering or public disclosure. So for instance, again, if you have a medical device, for instance, that's been published in manuscripts or if you have a methodology for purifying compound that's been published in the manuscript. Such materials that are in the public domain, and that have value may be more suitable for protection through patent protection. And there's not a one size fits all mechanism by which to protect University derived inventions, copyrights, trademarks, trade secrets, and patents are not mutually exclusive means by which you protect invention. And in fact, all of these modes of protection can be used to monetize license and enforce copyrights. So choosing between copyrights, trademarks, trade secrets, as is a very fact specific and a case by case specific exercise. And we'll try to attempt that exercise on the examples that were provided at the beginning of this presentation. Going back to this process for determining the susceptibility of a patient to disease. This process, different aspects of this process can be protected by copyrights, trademarks, trade secrets and patents. For instance, copyrights can be utilized to protect the tissue extraction protocols that may be used. Such protocols may be publicly presented to different partners around the world, in one instance, to obtain tissues from different patients, so they may not be trade secret. So copyrights may be an optimal way of protecting such protocols.

Speaker 2  42:49  
Trademarks could be utilized, for instance, to protect the name of this process. for branding purposes, maybe this process has a propriety, such as a catchy phrase or a logo that's associated with it that could be protected by trademarks. With respect to trade secrets, perhaps the software that's used to analyze the sequences and determine the susceptibility of patients to disease could be kept confidential and secret and proprietary in a locked up room in a university somewhere. In that case, the software could be maintained as its trade secret, and with patents, perhaps a treatment process could be protected by a patent. And going back to trade secrets, which is the subject of this presentation, if a determination is made that the software should be protected by trade secrets, then reasonable measures must be taken to protect the software as a trade secret inning again, the software needs to be kept in a secure area. In a university, such as in a room in a laboratory. Access to the software needs to be restricted to people who need to use the software and you'd need to know what the software does on an as needed basis. And most people need to sign confidentiality agreements. If the personnel who access the software departs the university, those personnel should undergo exit interviews where they are reminded that the software is proprietary and it belongs to the university and that they are not authorized to decode or recode the software in their future place of employment. And the software, for instance, needs to be kept in a computer that's secured. It has password protections and a reasonable firewall. Those are all the reasonable measures that need to be taken in order to maintain the software as a trade secret. You If those measures cannot be taken in a university setting, that's, that's okay. It's a university environments need to be open institutions where ideas are exchanged freely. However, if these measures are not taken, then trade secret production may not be a viable option. The same same evaluation can be applied to the process of purifying compounds and using them in disease treatment. In this hypothetical example, that copyrights, trademarks, trade secrets and patents could be utilized to protect different aspects of this complex process. For instance, copyrights may be utilized to protect the end Drug Administration protocols and manuals that were developed from this process. The names of the drugs could be protected by trademarks, for instance, for branding purposes, trade secrets, for instance, could be used to cover the proprietary extraction process and a proprietary identification process of the compounds provided again that the extraction process and the proprietary identification process can be kept as trade secrets. And last but not least, patents for instance, could be used to protect drug formulations and treatment process. Going back to trade secrets again, if if trade secrets are chosen as the means to protect the extraction process and identification process, then the reasonable measures need to be taken to protect the protocols for extracting the compounds from plants. And the reasonable measures need to be taken to protect proprietary software and distort scores and algorithms that are utilized to isolate and identify and test compounds. As far as guidelines go for protecting trade secrets guidelines, for trade secrets protection should also be considered within the context of a general IP protection guidelines. That involves copyrights, trademarks, trade secrets and patents. First and foremost, it's very important to devise an IP protection strategy as early as possible during the research and development stages. In other words, once the strategies devise, then once research goals are implemented, then it's worded to perhaps discuss the research goals and tasks with a IP professional such as the technology transfer office or your outside counsel to determine whether copyrights trademarks trade secrets and patents could be utilized in different manners to protect different aspects of an invention. Also, and this goes without saying in a university setting, but it's very important to maintain thorough records of research and development activities because their store records will help not only to devise and developed invention, but to also be helpful in determining what aspects of invention could be utilized could be protected by patents, trade secrets, trademarks, and copyrights. It's also important to avoid public disclosure of sale of inventions until such a strategy is devised. This is also very important because many times it happens that something is subject to trade secret protection, just like the cases that like I mentioned that something may be proprietary and may be subject to trade secret protection, but people were not aware of it and they inadvertently decided displayed it on their websites and their patent applications. So until the strategies device, it's important to not disclose anything to the public or make any sales so that there are no inadvertent dissemination of trade secrets. And also, patent protection is maximized. It's also important to itemize and identify the trade secrets with precision and informed institutions technology transfer offices, the existence of the trade secrets, so you can't really take reasonable measures to protect trade secrets. If you don't know what you're protecting. You have to know what the trade secrets are so that you can guard them and protect them. And once the trade secrets are identified, it's important to implement the reasonable measures that like a discus to make tain the secrecy of the trade secrets. And just to summarize, these are just some examples of the reasonable measures that you can take, such as executing employee confidentiality agreements, conducting exit interviews, refraining from publishing the trade secrets, safeguarding the disclosure of trade secrets in patent applications, as well as grant applications, and limiting access to the trade secrets. Those are very important guidelines to keep in mind as a IP protection strategy is devised. And we thank you for your attention. And we are available now until time allows to take any questions. And you can also reach us by email or phone. If you have any additional questions. Thank you for attention.

Speaker 1  50:54  
Thank you so much. We do have a few questions. So we'll make our way through those. Let's see, first of all, is there any suggested economical punishments for violating the NDA from the University personnel?

Speaker 2  51:10  
There are It depends. That's a very good question. It depends on the NDA. So a lot of non disclosure agreements have specific clauses that provide a what they call a liquidated damages clause to indicate that if you violate our NDA, the damages are non calculable. So therefore, you will owe us this amount. If you violate this NDA, a lot of times the amounts may be anywhere from $500,000 to $3 million. Certainly for demos to be enforceable, they have to be commensurate in scope with the damage. However, the short answer is, it depends on what damages and remedies are outlined in the NDAA. And whether liquidated damages clauses in there as well.

Speaker 1  52:11  
Great, thank you. Okay, we have is there any way to demonstrate a university exercises reasonable measures to protect, say trade secrets? When faculty members of the university commonly access trade secret information? Faculty members have no general confidentiality obligations to the university? And faculty members are encouraged to publicly disclose potential trade secrets as part of the faculty members scholarship?

Speaker 2  52:42  
Oh, my that's? That's a tough question. That's a good question. But it's a tough question. And sounds like a lot of work. So as we mentioned, so trade secrets require reasonable measures. So if a faculty member is publishing the trade secrets, and disclosing them without any agreements of confidentiality, unfortunately, there there will be no trade secrets, trade secrets will be gone, just like the cases that like I mentioned earlier in the presentation where the reasonable measures were not taken. The Pat at the trade secrets were publicly displayed on websites and patents and freely among parties. So it's important as far as the exercise goes, it's important to basically sit down with the faculty members, and indicate Okay, let's identify first and foremost, let's identify the trade secrets. And second, let's see who needs to know these trade secrets. Let's limit the access. And let's see if we can somehow limit access and this publications in grant applications and patent applications, and other in conferences. And these are very fact specific exercises, it really there's not a one size fits all policy. It's on a case by case basis. And a lot of times going to grant applications. A lot of times a lot of grant sources such as the National Institutes of Health provides the means to safeguard the trade secrets that may be displayed that disclosed in the grant application. It's important to mention what what is a trade secret that's being disclosed in a grant application. So that proper safeguards are taken with the institution reviewing the materials to keep keep them as trade secrets. So again, very good question. Very complex question. It depends and so effect very fact specific inquiry.

Speaker 1  54:59  
Great, thank you. Do a couple quick questions people just asking if it's appropriate, are appropriate platforms to store the trade secrets something like Google Drive, Ms Drive and Dropbox. And can a password be considered a firewall?

Unknown Speaker  55:20  
I'm sorry, I didn't catch can know what to be considered a

Unknown Speaker  55:22  
firewall, password.

Speaker 2  55:26  
Password. Okay. I'm not sure if a password could be considered a firewall, however, a password. That's a technical issue. And my PhD is in biochemistry, unfortunately. But however, passwords legally could be considered as a reasonable measure to maintain the secrecy of trade secrets. So Google Drives and other Google Drives and other cloud based systems are generally considered to be confidential, especially when they're under a firewall, especially when they're under a password protection. So if you use a Google Drive to share your trade secrets with your collaborators think that should be okay. So long as reasonable measures are taken, meaning that the materials being shared are password protected. Your Google Drive is password protected, it's on a publicly available Google Drive. And the materials you're presenting have confidentiality stamps on them, just like the confidentiality stamps you see here. And perhaps maybe even if you're sharing something with somebody, make sure that they're under a confidentiality agreement. Make sure that before they receive the materials, that they know that the materials are trade secrets, and they they're they're not authorized to disseminate them without authorization from the trade secret owner.

Speaker 3  56:58  
I think it's also the limiting access part is also important here. So even you know, more than where the trade secret is stored, and whether it's password protected, both of which are important. It's also important, that's as few people as possible have access to it, because I think courts look very closely to see how many people have access to a piece of information and the greater the number of people. It almost undercuts calling something a trade secret. If the vast majority of the people working in an institution or were aware were the contents of it, even if it was protected with passwords, and in a confidential manner. So it's it's limiting access to numbers of people is also critical. Yes.

Speaker 1  57:48  
Great, thank you. Um, just trade secret protection theme consistent with University's main mission of dispersing knowledge to the public? And does the trade secret protection for universities come into consideration for a possible espionage situation? Only?

Speaker 2  58:07  
Good question. In general, yeah. Yeah. That's a very good question. General trade secret as a whole if certainly, if you use trade secrets to protect every university derived invention, then that may not be coming in shirts in scope with the policy of the university in disseminating information publicly. However, having said that, some trade secret protection may be beneficial to the purpose of universities in promoting innovation, and advancing science and technology, because there may be some some intellectual property within universities that are being developed, that may not be practical for protection to patents, or copyrights for that matter. And that that may be more suitable for through trade secret protection, which would serve the purpose of the university in perhaps promoting innovation and furthering knowledge. And like, do you have anything to add?

Speaker 3  59:32  
Yeah, I was gonna say, I concur that, you know, trade secret protection is not the most ideal way to protect University inventions. However, in instances where the where the, where the purpose of pursuing any form of intellectual property is monetization, and if there are in from if there's information of a particular kind that is clear really important and proprietary to the university. However, for whatever reason doesn't qualify for the mainstream forms of protection. Like patents, it might be better to keep it as a trade secret. And again, we're talking about, you know, specific pieces of information that will be protected as trade secrets and not the whole invention, which is why as part of the, the IP strategy discussion, it's important to, to separate out what is protectable by by means where the public will find out about it like a patent application versus what is not protected by patent and therefore preferable to keep as a trade secret. So yeah, there are instances outside of economic espionage situations where trade secret protection does make sense in a university.

Speaker 1  1:00:54  
Great, thank you. So a couple, I want to put these two questions together, because they kind of I think, go together. Trade secrets, trade secrets are usually methodologies. What taking pictures of the machinery used to execute the method constitute a breach of the trade secret? And how can a person return a secret if it's already in his head?

Speaker 2  1:01:19  
Well, good question. So taking a picture of a trade secret, could constitute improper use of the trade secrets without authorization. So it could be a trade secret misappropriation. And the person taking the trade secret at the person taking a picture of a snapshot of a protocol, for instance, without improper use should be, should be demanded to perhaps delete, delete the picture from the, from the cloud and as well as the device that was used to take the picture. And as far as the trade secret thing in the person's head, you can't certainly you can't go in somebody's head and erase the trade secrets but but you can send a agreement or a reminder to that person to indicate that the trade secret that you have improperly obtained and you have knowledge of should not be disseminated to anybody else, they should be reminded of that and, and they should be basically reprimanded if they disseminate the trade secrets in any manner. Otherwise, the value of the trade secret and the validity of the trade secrets may be jeopardized.

Speaker 1  1:02:44  
Thanks. Just a couple more questions here. Wouldn't it be difficult for the universities to take additional steps to place written agreements and policies with students, faculties or other employees? Especially trying to keep scientific information secrets? Given students commonly frequently? How practical Is it under university environments to implement reasonable measures? And how common is it for universities to license trade secrets? Are there any data or statistics available?

Speaker 2  1:03:15  
Good question. Okay, so going through the practicality. As, as we mentioned earlier, it may not be practical to protect every single invention and every single research and development activity in a university setting. Because I mean, I remember from my graduate student days, that information was disseminated freely. Like in lab meetings into hallways. During social and formal gatherings, you were talking about your research projects, and research and development with people within your lab within your institution, outside your institution. And that's how that's the purpose of universities for the disseminate ideas. So it it's not practical to basically use trade secrets to protect every aspect of a university invention. However, it may be practical to be precise. And again, going back to the example. For instance, if you have a elaborate research project where you you figure out that you can keep the proprietary compound isolation protocol secret, because only a couple of people are using it. It could be practical to put those two people under a confidentiality agreement and say, Look, you can't talk about this protocol with anybody else. Just this protocol alone, nothing else. You can talk about your research projects with others, just as protocol or if you have a proprietary software And somebody, a couple of students or personnel are using the software to develop treatment plans and disease susceptibility measurements, then again, it may be practical to protect that particular software by placing those people under confidentiality just for that software alone, nothing else. And as far as a statistics goes, I'm not aware of any trade secret statistics as to how prevalent it is in universities. However, in my practice, my personal practice and let lako fine as well. I have seen trade secret licenses actually have negotiated trade secret licenses between a company and a university. Obviously, for confidentiality reasons, I can't go into the details. But it involves, for instance, a technology where, again, copyrights, patents, trademarks, and trade secrets were utilized to protect different aspects of the technology, and trade secrets was one aspect of that intellectual property protection strategy. And again, during the negotiations, we wanted to make sure that the reasonable measures are being taken to protect and safeguard the trade secrets. So and I'll pause here to see if like, has anything to add? Yeah,

Speaker 3  1:06:28  
I agree. I but I'm not aware of any statistics, per se, of licensing of trade secrets, excuse me in a university context, but I've definitely negotiated technology licenses that had a trade secret component to them and know how component to the to those licenses. So it does occur with some frequency. However, I'm not entirely sure of exactly how that that type of transaction is, is collected and collated and itemized for statistical purposes.

Speaker 1  1:07:09  
Great, thank you both. I think we just have maybe two more questions. Is there a manual or a guideline to structure a trade secret process within universities?

Speaker 2  1:07:22  
Good question. We there's a there's not a, again, every every situation is needs to be considered on a case by case basis. But our firm has has actually drafted various various blog articles, and that provide some guidelines on the reasonable measures that must be taken to protect trade secrets that are applicable to universities. However, again, I believe, and I'm we're happy to send you the blog articles that may provides guidelines. Having said that, though, trade secret protection, in my opinion, needs to be considered on a case by case basis based on the technology and the university environment and and the personnel involved and in different institutions involved as well.

Speaker 1  1:08:25  
Thank you. Last question here like to address COVID has changed the way we do all kinds of business? Has COVID affected the reasonable measures that we have to take to protect trade secrets?

Speaker 2  1:08:41  
Absolutely, absolutely. So yeah, with COVID. As you can imagine, people are more working remotely more and more from their homes. And one of the reasonable measures is you have to keep the trade secrets that you come into contact with confidential so. So if you're at home and working on a proprietary research project that may be subject to trade, secret protection, and trade secrets are at home, then you need to take extra reasonable measures to protect your trade secrets. And that includes making sure your computer has the proper firewalls, the proper virus protections, protection measures and the proper passwords and that it's reasonably protected against hacking, and is actually like paper materials, printed materials that contain trade secrets or in your home. You have to make sure that again, the reasonable measures are taken that your home is secure. That if you leave your home and leave the trade secret somewhere that you may have to make sure you're safeguard themselves. Now keep them in a locked closet or a safe practice more practically. So it has COVID has affected many different aspects of everybody's lives. Unfortunately, trade secret protection is one of them that you have to take extra security measures in remote work.

Speaker 1  1:10:23  
Thanks, guys. That is all the questions we have. Did either of you have any parting comments before I close the situation before I close the webinar down?

Unknown Speaker  1:10:35  
Like, do you have any comments, sir?

Unknown Speaker  1:10:37  
I do not. Thank you, Holly. Yes, thank

Speaker 2  1:10:41  
you very much, Ali. And as as as we mentioned, we're both available to answer any additional questions that may arise.

Speaker 1  1:10:48  
Great. Thank you on behalf of autumn, I want to thank you, Frank, and you, Leica, for this really informative discussion. I also want to thank everybody who attended today, and we hope you found some really good information. Just a reminder, a recording of this webinar will be available for viewing within just a few days of today's event access is included in your registration. Just visit the autumn website to view that recording or you can purchase a web of past webinars you might have missed. When you close out of this window and evaluation will pop up. If you could fill that out. We'd really appreciate it. It helps us, you know shape future events. And with that, I'll conclude our program for the day. Thanks so much for joining us and have a great afternoon. Thank you.

Unknown Speaker  1:11:31  
Thank you goodbye.

Transcribed by https://otter.ai