Secrets — In-house legal departments are making their plans for 2017 and many of them are contemplating a renewed emphasis on trade secrets. Managers who allocate at least some attention to trade secrets and trade secret asset management in their 2017 action plans may find that their decisions were justified.

2017 Action Plans

Many in-house IP managers will spend some of their time during Q4 2016 preparing their 2017 action plans. They will obviously focus on their key work areas in order to meet the goals of the function and the organization.

Broadly speaking, a 2017 action plans should:

  • Provide direction for the IP function for the next year.
  • Define the scope of the function’s activities in terms of what it will and will not do.
  • Match the activities of the function to the environment in which it operates so that it maximizes opportunities and minimizes threats.
  • Synchronize the function’s activities to its resource capacity.
  • Synchronize the function’s activities to the objectives of the business

2017 trade secretsBut for 2017 – Add Trade Secret Protection

Many in-house IP managers tend to ignore trade secrets for a variety of reasons. Some argue that because they are not a registered form of IP, that they fall outside their remit. Some feel uncomfortable dealing with trade secrets as the management of such assets poses some unique challenges. Some will say that all of their IP processes and systems are geared to only handling registered forms of IP, and trade secrets disrupt things.

Excuses, excuses, excuses!!!

Trade secret asset management is about the policies and procedure, processes and systems, education and governance defined and taken into use to help manage such assets.

Simply deciding to keep something secret is not sufficient!

Broadly speaking, any confidential business information which provides an enterprise a competitive edge may be considered a trade secret. Most companies possess such trade secrets and they are among the most valuable assets they possess.

In-House IP Departments

The corporate in-house intellectual property department or function is responsible for properly and professionally managing the intangible assets and intellectual property of the organization.

It is responsible for defining and establishing IP policies, combining or consolidate certain company-wide IP services as well as providing IP based specialized knowledge, best practices, and technology to serve customers and business partners.

It should be stressed that there is no one size fits all when it comes to such corporate in-house IP departments or functions. They vary greatly in terms of their size, their budget, their focus, their remit from management, their level of IP maturity and sophistication, their people’s skills and competencies, their knowledge and experience, their position within the overall corporate organizational structure, their internal structure and mode of operation, their processes, the key performance indicators (KPIs) which they have been taken into use, the level of IT usage within the Department, how data is utilized within the Department, plus much more.

Corporate in-house IP functions may also differ from one another in respect to their IP strategy and associated action plans, and the manner in which the function and its various activities adds value to the business. They may also vary in terms of how much time and attention they have given to IP Governance issues.

Regardless of what type of in-house IP department or function exists, the pressure is intense. In house IP management is like juggling – the manipulation of many objects at the same time. The juggler cannot afford to let one object fall to the floor, each one needs to be mastered.

Forces at Play

There are a number of forces which together mean that trade secret asset management is now becoming a business critical issue, and one which companies must address – Legislative developments (e.g. Defend Trade Secrets Act in US and EU Directive on Trade Secrets both passed in 2016); Finance & tax developments; Network security & cyber-crime (the hackers are after trade secrets); IP reform has weakened some other forms of IP like patents; Corporate governance; Companies embracing openness and the nature of employment.

In-house IP Managers should therefore properly manage these assets, carving out time in their schedule for their trade secrets and taking responsibility.

The Industry Consensus

If I cannot convince you of the growing importance of trade secrets, just take a read of a recent article by the Chief Patent Counsel at one of the largest patent holding companies in the world.

I would like to pick out three key insights from that article

“The Defend Trade Secrets Act is a “wake-up call” to companies that value and protect their intellectual property as trade secrets. Companies now have increased incentive to identify, capture, inventory and protect their potential trade secret information. Failure to do so now could forego the ability to leverage the DTSA downstream.”

2017 trade secrets“Technology and markets are trending toward increasing importance of trade secrets.”

“Trade secrets and patents are different forms of intellectual property, both of which play an important role in a comprehensive intellectual property strategy.”

If You Live Near a Dragon

I will leave you with a great quote by JRR Tolkien:

“It does not do to leave a live dragon out of your calculations, if you live near him”

Hazel Helps Companies Identify Rank & Protect Their Trade Secrets

The Hazel Trade Secret Asset Management System may help your company manage its trade secrets and trade secret processes. Hazel can keep track of your corporate trade secrets and help you determine an appropriate level of protection for each trade secret recorded. Hazel can record who in your organization is responsible for a given trade secret, who is responsible for protecting the trade secret, and who has access to the trade secret, among other things. Contact the Hazel Team today to learn more.

For Secrets, I’m Donal O’Connell.


News Years Fireworks by parapente 1 – Flickr., CC BY 2.0, Link

Dragon by User:MathiasrexOwn work, CC BY-SA 3.0, Link

Thomas Ewing is a commercial lawyer, registered patent attorney, and intellectual property counselor with more than 25 years of experience in the IP field.  In his consulting practice, Tom routinely advises international organizations, government agencies, universities, law firms, multinational corporations and financial institutions. Tom has been recognized as one of the world’s 250 best IP strategists by IAM Magazine in every edition of its IAM 250 since the list’s inception in 2009.