Trade secrets

When a patent isn't the best way

Protecting a trade secret is often a better choice than seeking patent protection. If a patent can't be granted or, if granted, would be difficult to enforce, trade secret protection might be preferable. Following a trade secret protection program prevents competitors from using your information or know-how and allows you to own it perpetually.

Sheldon Mak Rose & Anderson can help you identify your important trade secrets and can ensure that your protection program meets the requirements of trade secret law. That usually includes establishing in-house procedures for handling trade secrets and preparing appropriate employment and confidentiality agreements. If you¡¦d like to enhance the return on your trade secrets, we can also help you negotiate the sale of your commercially marketable trade secrets under favorable terms.

Protecting you against trade secret misappropriation claims is an important aspect of our expertise. To protect you, we can analyze the potential for adverse claims of trade secret misappropriation and advise you on appropriate courses of action. For example, we might encourage you to develop parallel technologies using "clean room" techniques, to negotiate a license to use competing technology, or to use public domain technology to avoid trade secret claims.

Consider Sheldon Mak Rose & Anderson for your trade secret-related needs, including:

• Identifying trade secrets
• Establishing trade secret protection programs
• Establishing employment policies and agreements
• Preparing confidentiality agreements
• Licensing trade secrets
• Conducting misappropriation analyses
• Establishing "clean room" operations

Case Study

A Sheldon Mak Rose & Anderson client trusted his employees. He permitted one particular employee access to all of his company's information, most notably the firm¡¦s most popular computer software packages. Just as the employee was getting to be knowledgeable and efficient, he quit to set up his own business. Within months, the ex-employee had a competitive product in the market and was selling the software at 30% below the former-employer's prices.

Sheldon Mak Rose & Anderson sued. An aggressive initial litigation strategy resulted in an early settlement. The ex-employee agreed not to use any of his former-employer's source code or structure and he agreed to substantially change his software package. The ex-employee also agreed to stay out of his former-employer's markets and to pay his former-employer substantial royalties for projected sales over the next year.