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License Executive Society USA & Canada

Combining Trade Secret and Patent Protection in an Integrated IP Strategy

  • 26 Oct 2021
  • 12:00 PM - 1:30 PM
  • Webinar

LES Silicon Valley Chapter Webinar:
“Combining Trade Secret and Patent Protection
in an Integrated IP Strategy”

Tuesday, October 26, 2021

Please join the Silicon Valley chapter for a “fireside chat” style conversation between two veteran Silicon Valley IP colleagues discussing “Combining Trade Secret and Patent Protection in an Integrated IP Strategy.”

Historically, at least in the US, these two forms of protection were, and to a lesser extent still are, viewed by many IP professionals as inconsistent and incompatible because patent law requires public disclosure (via publication) of the “best mode” of implementing a particular inventive concept, which would seem to preclude any further protection for the disclosed material under trade secret law. 

Conversation topics will include:

  • Does one really need to make an “election,” at some point, between patent and trade secret protection, i.e., are they alternative or complementary forms of protection?
  • The current status of the “best mode” requirement under US patent law.
  • Other relevant disclosure requirements under Section 112 of U.S. patent law: Enablement, Written Description, Claim Definiteness, etc.
  • Does intentional omission of implementation-level details that would be “obvious” to a person of ordinary skill in the relevant art violate best mode?
  • International implications: Does integration travel well?
  • Converting tacit knowledge (human capital) to explicit (and legally protectible) know-how (a form of intellectual capital)
  • Documenting trade secrets for M&A, licensing and other forms of tech-transfer, as well as future litigation for misappropriation
  • Reverse engineering issues

There will be ample opportunity for attendee comments and questions following the chat.

James Pooley, Trade Secrets Litigator, Advisor and Expert
Jim is a Silicon Valley lawyer representing clients in trade secret and technology-related commercial disputes, advising companies on trade secret strategy and management as well as serving as a special master, expert witness and arbitrator. He is an author or co-author of several major works in the IP field, including his and well-known and often-cited treatise Trade Secrets (Law Journal Press) and the Patent Case Management Judicial Guide (Federal Judicial Center). His most recent business book is Secrets: Managing Information Assets in the Age of Cyberespionage (Verus Press). The Senate Judiciary Committee relied on Jim for expert testimony and advice during consideration of the 2016 Defend Trade Secrets Act, and one Senator later called his participation “instrumental” in achieving passage of this landmark legislation. In 2014, he completed a five-year term as Deputy Director General at the World Intellectual Property Organization in Geneva, where he was responsible for management of the international patent system (PCT). He is a past President of the American Intellectual Property Law Association and Chairman of the National Inventors Hall of Fame. Jim currently serves as Chair of the Sedona Conference Working Group 12 on Trade Secrets and has served as Co-Chair of the Trade Secret Task Force of the International Chamber of Commerce. He also taught trade secret law at the UC-Berkeley School of Law for many years. In 2016 Jim was inducted into the IP Hall of Fame for his contributions to IP law and practice.

Ron Laurie, Managing Director, Inflexion Point Strategy, Chair, LES Silicon Valley Chapter
Ron has worked in Silicon Valley since before it had that name, initially as a design engineer at Lockheed Missiles & Space Co, as an IP lawyer at several major law firms, and most recently as an investment banking advisor focused on extracting maximum value from “intellectual capital” assets in complex corporate transactions, including M&A, technology spin-outs and multi-party JV relationships. As a lawyer, Ron was a founding partner of the Silicon Valley offices of Irell & Manella, Weil Gotshal and Skadden Arps. At Skadden, he founded and chaired the firm's IP Strategy and Transactions practice group for six years and led IP teams in high-tech and life science deals worth over $50 billion in the aggregate. Ron retired from Skadden in 2004 and turned in his bar card to launch Inflexion Point Strategy, the first IP-focused investment banking advisory firm. With affiliates in Toronto, Taiwan and Singapore, Inflexion Point advises technology companies and institutional investors around the world in acquiring, divesting and investing in IP-rich companies, business units, technologies, and strategic intellectual capital assets in the form of patent portfolios, exclusive field-of-use rights, and related know-how and data. Ron has been an independent board member at Wi-LAN, Inc., one of the oldest and most successful publicly-traded patent licensing companies. He has served on the advisory board of the Hoover Institution Working Group on Intellectual Property, Innovation, and Prosperity (IP2) at Stanford and has taught patent IP strategy courses at Stanford and UC-Berkeley law schools.

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