Trade secrets are a more important form of an intellectual property asset than ever. Congress recently passed the Defend Trade Secrets Act of 2016, which created new federal laws that allow an owner of a trade secret to sue in federal court when its trade secrets have been misappropriated. And as technology continues to exponentially progress in the digital age of the 21st Century, the need for businesses to protect and limit access to valuable and confidential trade secret information continues to rise. The progress in technology and expansion of information also promotes means for monetizing and leveraging trade secrets. How do you identify your trade secrets, protect them, and leverage them? These are the questions this cutting-edge webinar discusses and seeks to answer. To view the accompanying webinar, go to: https://www.financialpoise.com/financial-poise-webinars/leveraging-protecting-trade-secrets-in-the-21st-century-2021/

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Practical and entertaining education for
attorneys, accountants, business owners and
executives, and investors.

4. Disclaimer
The material in this webinar is for informational purposes only. It should not be considered
legal, financial or other professional advice. You should consult with an attorney or other
appropriate professional to determine what may be best for your individual needs. While
Financial Poise™ takes reasonable steps to ensure that information it publishes is accurate,
Financial Poise™ makes no guaranty in this regard.
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5. Meet the Faculty
MODERATOR:
Eugene Goryunov - Haynes and Boone LLP
PANELISTS:
Sanjay Prasad - Prasad IP, P.C.
Ada Nielsen - The Peregrine Maven Group
Darren Spielman - The Concept Law Group, P.A.
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6. About This Webinar - Leveraging & Protecting Trade
Secrets in the 21st Century
Trade secrets are a more important form of an intellectual property asset than ever.
Congress recently passed the Defend Trade Secrets Act of 2016, which created new federal
laws that allow an owner of a trade secret to sue in federal court when its trade secrets have
been misappropriated. And as technology continues to exponentially progress in the digital
age of the 21st Century, the need for businesses to protect and limit access to valuable and
confidential trade secret information continues to rise. The progress in technology and
expansion of information also promotes means for monetizing and leveraging trade secrets.
How do you identify your trade secrets, protect them, and leverage them? These are the
questions this cutting-edge webinar discusses and seeks to answer.
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7. About This Series
Intellectual Property 101 - 2021
Intellectual property (IP) rights constitute an important asset class. Indeed, the “information
economy” and high tech have made this asset class go from one that few understood and
even fewer invested in to one watched and invested in by millions. IP includes patents,
trademarks, copyrights, and trade secrets. How do you create rights in one of these assets?
How do you protect those rights? How do you transfer them (or have them transferred to
you)? How do they interact with each other? This information-packed webinar series focuses
on the intricacies of IP rights as they relate to the specific areas of brand protection, IP
transactions, internet marketing, and other IP issues that are critical when representing
innovators and inventors.
Each Financial Poise Webinar is delivered in Plain English, understandable to investors, business owners, and
executives without much background in these areas, yet is of primary value to attorneys, accountants, and other
seasoned professionals. Each episode brings you into engaging, sometimes humorous, conversations designed to
entertain as it teaches. Each episode in the series is designed to be viewed independently of the other episodes so that
participants will enhance their knowledge of this area whether they attend one, some, or all episodes.
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8. Episodes in this Series
#1: IP-What Every Lawyer & Every Client Must Understand
Premiere date: 1/25/21
#2: Copyrights, Patents, and Trademarks...Oh My!
Premiere date: 2/25/21
#3: Leveraging & Protecting Trade Secrets in the 21st Century
Premiere date: 3/25/21
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9. Episode #3
Leveraging & Protecting Trade Secrets in the 21st Century
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10. What is a Trade Secret?
• General Definition:
• A trade secret is any information:
 That derives economic value from not being readily ascertainable; and
 Is the subject of reasonable efforts to maintain its confidentiality.
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11. What is a Trade Secret?
• Illinois Trade Secret Act Definition:
• A trade secret is defined as information, including but not limited to, technical or non-
technical data, a formula, pattern, compilation, program, device, method, technique, drawing,
process, financial data, or list of actual customers or suppliers that:
 Is sufficiently secret to derive economic value, actual or potential, from not being
generally known to other persons who can obtain economic value from its
disclosure or use; and
 Is the subject of efforts that are reasonable under the circumstances to maintain its
secrecy or confidentiality.
765 ILCS 1065/2(d)
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12. What is a Trade Secret?
• The Federal Defend Trade Secrets Act of 2016 (“DTSA”) Definition:
“All forms and types of financial, business, scientific, technical, economic, or engineering
information, including patterns, plans, compilations, program devices, formulas designs,
prototypes, methods, techniques, processes, procedures, programs or codes,” where the
trade secrets owner "has taken reasonable measures to keep such information secret" and
where the information derives economic value from its secrecy. 18 U.S.C. § 1839(3).
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13. Summary of Trade Secret Requirements and
Limitations
• To receive trade secret protection, information must be.
 A secret;
 Protected by reasonable efforts; and
 Valuable as a secret.
• Limitations on trade secret protection include:
 Prior use;
 Independent discovery; and
 Reverse engineering
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14. Factors for Measuring Whether a Trade Secret Exists
• The extent to which the information is known outside of a business;
 The extent to which the information is known by employees and others involved in
the business;
 The extent of measures taken by the business to guard the secrecy of the
information;
 The value of the information to the business and its competitors;
 The amount of time, effort, and money expended by the business in developing the
information; and
 The ease or difficulty with which the information could be properly acquired or
duplicated by others.
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15. Trade Secret Misappropriation
• Trade secret misappropriation occurs when there is a wrongful use, disclosure, or
acquisition of the trade secret by “improper means.”
• Trade secret misappropriation typically occurs in the context of employer-employee
relationships, but may also occur when any person or thing is given access to protectable
information.
• Trade secret misappropriation can also occur via espionage and hacking.
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16. Trade Secret Misappropriation
• Under the DTSA, “misappropriation” is generally defined as “an unconsented disclosure
or use of a trade secret by one who (i) used improper means to acquire the secret, or, (ii) at
the time of disclosure, knew or had reason to know that the trade secret was acquired through
improper means, under circumstances giving rise to a duty to maintain the secrecy of the
trade secret, or derived from or through a person who owed such a duty.”
18 U.S.C. § 1839(5)
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17. Trade Secret Misappropriation
• Improper Means -
Misappropriation can manifest in different ways, but according to most statutory definitions,
the method of acquisition needs to be “improper”: “theft, bribery, misrepresentation, breach or
inducement of a breach of a duty to maintain secrecy, or espionage through electronic or
other means.” 18 U.S.C. § 1839(5).
The language of Illinois' trade secret statute differs slightly: "theft, bribery, misrepresentation,
breach or inducement of a breach of a confidential relationship or other duty to maintain
secrecy or limit use, or espionage through electronic or other means." 765 ILCS 1065/2(a).
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18. Trade Secret Misappropriation
• Inevitable disclosure -
The "inevitable disclosure doctrine" allows a plaintiff to prove a claim of trade secret
misappropriation by demonstrating that defendant's new employment will inevitably lead him
to rely on the plaintiff's trade secrets.
• Under the doctrine courts consider:
 the level of competition between the former employer and the new employer;
 whether the employee's position with the new employer is comparable to the position
he held with the former employer; and
 the actions the new employer has taken to prevent the former employee from using or
disclosing trade secrets of the former employer.
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19. Trade Secret Misappropriation Remedies
• Seizure – Petition a court for an ex parte seizure of property necessary to prevent the
propagation or dissemination of trade secrets.
 Temporary Restraining Order or Preliminary Injunction – Petition a court to restrain a
defendant from using or disseminating the trade secrets.
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20. Trade Secret Misappropriation Remedies
• Monetary Damages
 Lost Profits– calculated based upon the difference between the profits which a party
could reasonably be expected to make and the profits which it did in fact earn.
 Unjust Enrichment– the unfair benefit a person earned due to the misappropriation.
 Reasonable Royalty– hypothetical negotiation between a willing buyer and willing
seller.
 Attorneys’ Fees and Costs and Exemplary Damages– often awarded for willful or
malicious misappropriation.
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21. Protecting Trade Secrets
• Understanding and Defining Your Valuable Information
 Implement practices to identify specific valuable information.
 Create policies and procedures to reduce access and prohibit disclosure to the
information.
 Simply pointing to broad areas of technology and stating an area must be secret is
insufficient.
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22. Protecting Trade Secrets
• Agreements to protect trade secrets -
 Non-Disclosure Agreements– a non-disclosure agreement is a general agreement
between parties to refrain from disclosing specific information shared between the
parties as specified in the agreement.
 Employment, Consulting, and Joint-Venture or Joint-Research Agreements –
consulting agreements may contain non-competition provisions as well as
provisions detailing the ownership of intellectual property rights and the
requirements to maintain confidentiality of information shared or learned under the
agreement.
 Employee and Corporate Policies – may support an effort by an employer to
maintain the secrecy of information.
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23. Protecting Trade Secrets
• Agreements to protect trade secrets –
• Restrictive Covenants
 Non-compete agreements– an agreement not to compete in a specific line of
business with a party.
 Non-solicitation agreements– an agreement not to solicit customers in a
specific line of business with a party.
 No-hire agreements– an agreement not to hire employees or contractors away
from a prior employer.
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24. Protecting Trade Secrets
• Agreements to protect trade secrets –
 Restrictive covenants are often highly scrutinized by courts and may be rendered
unenforceable if not carefully drafted.
 Typically, courts consider the nature of the business and provision, including the
scope, time period, and geographic range of the provision.
 A restrictive covenant should nevertheless be upheld if it contains a reasonable
restraint and the agreement is supported by consideration.
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25. Protecting Trade Secrets
• Preventing or Minimizing Access and Dissemination
 Information Governance
o Proactive policies and procedures to structure, control, and organize a
company’s information.
o For example:
 Partition networks, hard-drives, etc. to limit access to drives, folders,
files, data, etc.
 Require user credentials or two-factor authentication to access information.
 Keep certain valuable information in hard-copy or on un-networked
computers.
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26. Protecting Trade Secrets
• Preventing or Minimizing Access and Dissemination –
 Data-encryption and Cryptography
o File and data encryption methodologies may prevent information from being
compromised by malware, hackers, phishing expeditions, etc.
o Encryption allows information administrators to restrict access to information on
a need-to-know basis.
o Use of cryptograph allows agents to share messages and information such as
trade secrets securely over a network.
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27. Protecting Trade Secrets
• Preventing or Minimizing Access and Dissemination –
 Retain employees – protect, as best you can, against a disgruntled employee
situation;
 Implement pre and post termination policies to ensure information accessible by
former employee is not compromised;
 Monitor employee access to information;
 Engage consulting services to identify and protect trade secret information.
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28. Leveraging Trade Secrets
• Some of the ways to leverage trade secrets include:
 Identifying and incorporating trade secrets in your company’s intellectual property
portfolio.
 Making trade secrets a part of your company’s growth strategy.
 Licensing trade secrets to customers, clients, or even competitors.
 Selling or acquiring trade secret information.
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29. About the Faculty
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30. About The Faculty
Eugene Goryunov - eugene@poligenes.com
Mr. Goryunov is an experienced trial lawyer that represents clients in complex patent matters involving
many diverse technologies. He is deeply involved, as trial counsel, in all aspects of cases pending in
Federal courts, at the U.S. International Trade Commission involving Section 337 investigations, and in
appeals at the U.S. Court of Appeals for the Federal Circuit. He also regularly serves as first-chair trial
counsel in post-grant review trials, on behalf of both Petitioners and Patent Owners, pending at the U.S.
Patent & Trademark Office. To date, he has been involved in over one-hundred post-grant review trials.
Mr. Goryunov is a regular contributor to intellectual property publications, including the Intellectual
Property Magazine, The Patent Lawyer, and the IPO Law Journal. To date, he has published more than
sixty articles, many of which discuss post-grant review trial practice. Mr. Goryunov also speaks about
diverse issues of patent law and post-grant review trial practice. He also teaches patent law and
intellectual property litigation at the Columbia University and previously at the University of Notre Dame.
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31. About The Faculty
Sanjay Prasad - sanjay@prasadip.com
Sanjay has practiced at the forefront of technology and intellectual property for over twenty years. He is
experienced in all business and legal aspects of intellectual property from developing IP strategy for
senior management to execution of the strategy, including patent portfolio development, deal
development and negotiation and monetization. Sanjay has practiced in law firms in Boston and Silicon
Valley, served as chief patent counsel to Oracle Corporation, headed up the India office of IPVALUE
Management and served in several senior roles at Intellectual Ventures.Sanjay has been repeatedly
recognized byIntellectual Asset Management Magazine as one of the world’s leading IP strategists. He
has testified before a U.S. Congressional Subcommittee on patent legislation, is a frequent speaker on
topics pertaining to IP law and has served in leadership capacities on several IP association boards.
Sanjay is admitted to practice in California, Massachusetts, the U.S. Patent and Trademark Office and
various federal courts. Sanjay earned his law degree from Syracuse University College of Law where he
was an editor of the Syracuse Law Review. He also earned a Masters in Computer Engineering and a
Bachelor in Electrical Engineering, both from Boston University.
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32. About The Faculty
Ada Nielsen - ada@peregrinemaven.com
Ms. Ada C. Nielsen is Managing Director of The PeregrineMaven Group. She created The PeregrineMaven
Group to commercialize inventions, & improve profitability for new & established businesses, products &
services. In addition, she is launching a consulting practice around sustaining the business/technical cultures of
creating and protecting trade secrets. She has commercialized dozens of inventions & created new ventures in
chemicals, materials & energy – as well as in other market areas. She has been successful working for major
companies (such as Amoco, BP, Nalco Chemical Company & Chemical Waste Management) in business
development, finance, sales & marketing – measured by commercial success & an improved bottom line. She
leads the implementation of virtual chat rooms for Milwaukee Women (where she is also a member). She
developed a very successful hands-on 2-day course for current&future directors and business executives for the
Private Directors Association in 2019. She served as president of the Licensing Executives Society (USA&
Canada) Inc. in 2010, as Wisconsin Chapter Chair for LES, and as president of the Commercial Development &
Marketing Association. She served on the board of the Association for Corporate Growth Chicago for 7 years
andwas named one of the Top 300 International IP Strategists for 7 years in a row (IAM Magazine). She earned
an A.B. in chemistry from Wellesley College, an M.B.A. in finance & marketing from the University of Chicago
Booth Graduate School of Business, & studied theoretical physical chemistry in graduate programs at Carnegie-
Mellon University, Tulane University & Dartmouth College. She is a Certified Licensing Professional.
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33. About The Faculty
Darren Spielman - DSpielman@ConceptLaw.com
Darren Spielman is a Shareholder of Kain Spielman, P.A. He concentrates his practice in the field of intellectual
property, with an emphasis on trademarks, trade secrets, domain name disputes, copyrights, first amendment
law including slander, libel and defamation. Darren has a Bachelor of Science in Public Relations from
University of Florida. He also earned a Masters in Mass Communications degree from the University of Florida,
as part of a joint degree with the University of Florida Levin College of Law. Darren is admitted to practice in
front of the U.S. District Court for the Northern District of Florida, Southern District of Florida, and Middle District
of Florida and the Eleventh Circuit Court of Appeals. Darren is a member of the Intellectual Property Committee,
the Vice Chair of the E-discovery Committee and the Computer Law and Technology Committee of the Business
Law Section of the Florida Bar. He is also a Board Member of the Federal Bar Association Broward Chapter.
Darren is a member of the Intellectual Property Law Association of Florida, the First Amendment Lawyers
Association and the Broward County Bar Association. Awards & Accolades: Darren has been honored as AV
Rated with Martindale Hubble 2015-2018 and with the Super Lawyers Rising Stars Award for 2009-2011, 2013-
2018 and Top Attorneys Florida Outstanding Young Lawyers Award for 2011, 2013-2017; America’s Most
Honored Professionals Top 1%, 2016-2018. Darren is also a frequent presenter and public speaker on
Intellectual Property and First Amendment topics.
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34. Questions or Comments?
If you have any questions about this webinar that you did not get to ask during the live
premiere, or if you are watching this webinar On Demand, please do not hesitate to email us
at info@financialpoise.com with any questions or comments you may have. Please include
the name of the webinar in your email and we will do our best to provide a timely response.
IMPORTANT NOTE: The material in this presentation is for general educational purposes
only. It has been prepared primarily for attorneys and accountants for use in the pursuit of
their continuing legal education and continuing professional education.
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35. About Financial Poise
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