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License Executive Society USA & Canada

Silicon Valley In-Person Event 11-14-23 - Jim Pooley: How to Manage Trade Secrets Without Breaking a Sweat

  • 14 Nov 2023
  • 11:00 AM - 1:30 PM
  • Procopio, Cory, Hargreaves & Savitch, LLP

November LES Silicon Valley Chapter In-Person Event

Welcome Jim Pooley: Reasonable Efforts - 
How to Manage Trade Secrets Without Breaking a Sweat


Tuesday, November 14, 2023
11:00 a.m. - Registration, Networking, Lunch
12:00 p.m. - 1:30 p.m. - Program

Location: Procopio, Cory, Hargreaves & Savitch, LLP
3000 El Camino Real, 5 Palo Alto Square, Suite 400, Palo Alto, CA


Recap published in LES The Deal Point Blog, December 26, 2023, click here.

The LES Silicon Valley Chapter is extremely pleased to bring Jim Pooley to the Silicon Valley community to present a deep dive into successfully managing trade secrets.  Recent studies show that secrecy is the form of IP most relied on by businesses to maintain competitive advantage. And huge verdicts reflect the value of this asset category.  But how do you manage something you can’t precisely describe or count, even though it’s everywhere in the business?  It’s not as hard as it looks.

Points to be covered:

  • Enhancing enterprise value with secrets
  • Trade secrets and patents
  • Identifying your trade secrets
  • Developing a risk management framework
  • Managing third party relationships
  • Employee contracts in the post-noncompete world
  • Smart hiring and offboarding
  • Avoiding (or resolving) disputes
  • The TSMC example

Jim Pooley stands out among global experts for his deep understanding of both trade secrets and patents from a legal and operational perspective. The purpose of Jim’s work is to elevate the trade secret practice to equal the attention and respect paid to the “registered” IP rights: patents, copyrights, trademarks and designs. Working in this field since the early years of Silicon Valley, h appreciates the powerful but often evanescent commercial value of information. Traditional IP practitioners are comfortable with the statute-based, relatively predictable world of the registered rights, which are negotiated with the government and described in an official certificate. But trade secrets, encompassing all of a company’s useful data, are ubiquitous in the modern enterprise, and often they aren’t defined until there’s a dispute about them.

Jim focuses on trade secret law and management, as an advocate, advisor, testifying expert and neutral. He is an author or co-author of several major IP works, including his treatise Trade Secrets (Law Journal Press), the Patent Case Management Judicial Guide and the recently-released Trade Secret Case Management Judicial Guide (both published by the Federal Judicial Center). His most recent business book is Secrets: Managing Information Assets in the Age of Cyberespionage. The Senate Judiciary Committee relied on Jim for expert testimony and advice regarding the 2016 Defend Trade Secrets Act. From 2009 to 2014 Jim served as Deputy Director General of WIPO in Geneva, where he managed the international patent system. He is a past President of AIPLA and Chairman of the National Inventors Hall of Fame. He is Chair Emeritus of the Sedona Conference Working Group 12 on Trade Secrets and Co-Chair of the Trade Secrets Task Force of the International Chamber of Commerce. In 2016 Jim was inducted into the IP Hall of Fame for his contributions to IP law and practice.

CLE: 1.5 hours California CLE available.

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