JONES DAY PRESENTS®: When the Effort to Protect Pays Out: Identifying, Protecting and Litigating the Crown Jewels
A company's "crown jewels" are its trade secrets most worthy of protection. Jones Day Partner Andrea Weiss Jeffries explains the importance of identifying the crown jewel trade secret assets and protecting them through litigation.
A full transcript appears below.
Andrea Weiss Jeffries:
You can't protect everything with the same level of protection. So really what clients sometimes don't take the opportunity to do is to really identify what you could consider sort of your crown jewels or your most important trade secrets. And those are the ones really where the effort to protect pays out because those are the ones at the end of the day that typically a client's going to care the most about. So identifying those, knowing where they are, knowing where the documents are that sort of surround those trade secrets, and making sure that those get the utmost protection is really something that we tend to recommend to clients to keep your eye on. As opposed to trying to keep everything and have confidentiality over everything that might go on at the company.
Everyone is very busy and when you are working at a company you're in-house, you're really not always thinking about, how do I protect the most important component of my process? Or really what is the most important component of my process? If you're on the engineering side or on the development side, you're thinking about the process and optimizing it, and doing the best to get the product out the door and not necessarily sitting down, writing down what the trade secret is, making sure you know where all the facets are held. So I don't think it's negligence and I'm not sure it's not knowing. I think it's more really taking the time to take a step back and assess what is the most important component of what we do, and are we making sure that it's adequately protected?
We've seen an uptick in claims relating to collaborations. That is where one company will intentionally work with another company, either a joint venture or some sort of collaboration, and that ends either favorably or unfavorably. And then one of the two companies will see the other using some of the trade secrets that were developed during that collaboration. Clients more and more are trying to assess where to file their lawsuits. And there's various jurisdictional issues that we have to deal with in terms of where the companies are located, or where a former employee might now be located, where they worked, if they took trade secrets, whether we want to be in federal court or state court in the United States, whether we want to sue outside the United States. What do we do if trade secrets have been taken outside of the United States? And how do we want to have those issues resolved? Do we go into arbitration as opposed to filing a lawsuit in court? That's a growing area as well.
So there's just a lot with respect to where do I file? What jurisdiction do I want? And what kind of law do I want governing this lawsuit to the extent I have a choice at the outset?
