Trade Secret ProtectionTrade Secret Protection

Dr. Kalyan C. Kankanala,BananaIP

Blog: www.bananaip.com/sinapse-blog

Overview

Historical Development Rationale Terms Real vs. Trade Secrets Differences

Trade Secret

Elements

Independent economic value Generally known or readily ascertainable Proper means Persons Reasonable Efforts

Trade Secret

Reasonable efforts

Express duty of non disclosure via Employment agreements Non-disclosure agreements Entrance and Exit interviews Restricted access Marking Security system and policy

Misappropriation

Conduct which results in obtaining trade secret information by improper means constitutes misappropriation.

‘Imrproper means’ Criminal Conduct Breach of Contract Tortious liability

Defenses

Independent Creation Reverse Engineering

Remedies

Injunction Damages costs

Niranjan v. Century Spinning

Employee - Training Confidentiality and Non-compete clauses in

employment agreement of 5 years Joined competitor Injunction against disclosure Restraint during term of agreement valid

AIR 1967 SC 1098

Mundipharma AG Vs. Wockhart

Polyvinyl pyrolidone-Iodine (PVP-I) License to sell preparations - 'Betadine' and

Isodine Confidentiality of manufacturing processes Non-compete clause Held not valid as information not confidential

ILR 1991 Delhi 606

Case 1

Salsbury

Met with higher ups before joining

Worked on the same project

Took valuable documents

Wrote an article criticizing the project

Case 2

Pioneer v. Holden

Seen around farms Managed to hire a key person Acquired data related to breeding

Indian Law

Trade Secrets

Contract Trust/Relation of Confidence Criminal Law IT Act Official Secrets Act

Patent v. Trade Secret

Three areas of conflict

Patentable Partially patentable Not patentable

Factors

Patent and Padlock

Overprotect Exploit the overlap Build a wall Lay a mine field Fall back position

Patent and Padlock

– Thank you– For the ppt and further information

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