Thought Leadership on Trade Secrets

Jim Pooley is an active author & speaker on trade secrets and intellectual property. Along with his books, speaking engagements, and press mentions, Jim produces a monthly e-mail newsletter that is syndicated with the popular website IP Watchdog.

Below, you can access all previous editions of the newsletter. Subscribe to receive the monthly newsletter in your inbox every month.

Government-Forced Technology Transfer Is Almost Always Wrong

March 29, 2022

“All warfare is based on deception. There is no place where espionage is not used.”             — Sun Tzu What does the invasion of Ukraine have to do with COVID-19? Would you believe intellectual property is the link? Stay with me on this; it’s an interesting story. Recently, it was confirmed that the Main Intelligence Department of […]

Learning to Live with ‘Zero Trust’: It’s Not as Depressing as it Sounds

February 23, 2022

“‘Zero Trust’ is not some dystopian nightmare in which we have lost all our humanity. In fact, it may make our jobs easier by automating detection and response processes that now involve humans with all their capacity for error and misjudgment.” “Trust, but verify.”– President Ronald Reagan Trust is getting a lot of attention these […]

Lessons From Theranos and the Trade Secret Defense

January 31, 2022

“Secrecy is the badge of fraud.” — Sir John Chadwick What a strange and compelling story. Brilliant young inventor conceives revolutionary machine, raises staggering amounts from investors, is fawned over by the press for a decade, then crashes to earth on revelations of faked demonstrations and technology that doesn’t work. When I learned of the […]

What You Need to Know About Trade Secrets in 2021

December 14, 2021

Last year at this time, we thought we had been through the worst of it and, with the new vaccines arriving, that life would return to normal in 2021. Hahaha, how naïve we were! But take heart; some things hold steady through the storm, such as the popular sport of trade secret litigation. Unlike most […]

When the Secret Enables the Brand: The Long-Lasting Listerine License

November 23, 2021

“It is non-poisonous.” — 1931 advertisement for Listerine® Question: how do you make money from a secret formula for a product that smells and tastes horrible and that no one wants? Answer: you make everyone believe they have a medical problem that only this stuff can solve. Back in 1879, Joseph Lawrence, a St. Louis […]

Acquisition Contamination: The Mythology of the ‘Clean Team’

October 29, 2021

“Companies shopping to buy other companies, or to acquire a license to their technology, entertain risk. That’s because in the process of interviewing potential targets they can become exposed to highly valuable trade secrets.” “Risk management is about people and processes and not about models and technology.” — Trevor Levine Have you ever shopped for […]

Noncompete Agreements: Finding the Balance Between Reasonable Restraints and Free Range Talent

September 26, 2021

“There’s no doubt that restricting an employee’s ability to leave and compete can impose serious costs on the individual…. But that doesn’t necessarily mean that the competition would be fair.” “It is impossible to unsign a contract, so do all your thinking before you sign.” Warren Buffet You may remember 2014 as the year when […]

Carefully Connecting the Dots: Consider All the Evidence Before Launching a Trade Secret Misappropriation Attack

July 29, 2021

“Some circumstantial evidence is very strong, as when you find a trout in the milk.” – Henry David Thoreau I know that some of you want to dive right into how Thoreau came up with that sardonic and mystifying line. We’ll get there, but let’s start with my high school. I was terrible at math […]

‘Decoupling’ with China is Not the Answer

June 28, 2021

“Never mistake activity for achievement.” —Coach John Wooden We’ve all seen him when driving by the strip mall. Trying to focus on the traffic, our eyes are diverted by “Tube Man,” a 10-foot tall hollow, collapsible stick figure with a fan at the bottom, adjusted so that the body repeatedly folds and then jumps upright, […]

The Big Secret Behind the Proposed TRIPS Waiver

May 25, 2021

“Be careful what you ask for because you just might get it.”  — Anonymous All the fuss surrounding the proposal by India and South Africa to suspend the TRIPS Agreement to help them produce vaccines to fight COVID-19 has obscured some critical truths. In spite of the rallying cry “Patents versus People,” it’s not really […]

Who Needs to Know? The Hidden Value of Transparency

April 29, 2021

“In a networked world, trust is the most important currency.” —Eric Schmidt I recently finished Gen. Stanley McChrystal’s book, Team of Teams, in which he describes organizational lessons learned as Commander of the Joint Special Operations Command in Iraq. Arriving in 2003, when Al Qaeda in Iraq (AQI) was outsmarting the best special forces that NATO […]

How Mediation Can Help Both Sides Win a Trade Secret Case

March 29, 2021

In over 40 years of handling trade secret disputes, I have seen plenty of “successful” results, but never a time when my client said, “Gee that was fun; let’s do it again!” They may tell me they’re happy with the outcome, but hey, I know that it also feels good to stop hitting yourself with […]

Trade Secrets and the Insider Threat: Protection Beyond the Perimeter

February 23, 2021

The Lord of the Rings trilogy ends in suitably spectacular fashion with a battle scene following the retreat of all the good people to “Helms Deep,” a tall stone fortress built into the recess of a massive rock mountain. Seemingly impregnable, the thick wall facing the invaders contains a small flaw: a drainage outlet about five […]

Pardon Me? Levandowski Case Highlights Need for Proactive Approach to Avoid Trade Secret Problems in Hiring

January 27, 2021

“You never have trouble if you are prepared for it.” – Theodore Roosevelt My head was turned by the recent news of President Trump’s final-day pardon of Anthony Levandowski, the former head of Google’s self-driving car unit who was recruited into Uber with full knowledge that he had downloaded 14,000 confidential files on his way […]

Take Heed: Lessons from the Top Trade Secret Cases of 2020

December 20, 2020

“On motions to seal, which can consume a great deal of the court’s time and effort, get it right the first time. And by the way, be scrupulously aware of variations in rules among district courts.” One of the uniquely fascinating aspects of trade secret disputes is that they are laced with unbridled emotions, accusations […]

When It Pays to Talk About Your Secrets

November 23, 2020

“The single biggest problem in communication is the illusion that it has taken place.” — George Bernard Shaw The conversation begins,“Can you keep a secret?”“Yes, of course,” they say. What happens next? Naturally, you tell them what it is that you are going to trust them with. That’s the way it happens in personal relationships. […]

It’s 10:00 PM: Do You Know Where Your Secrets Are?

October 27, 2020

“When thinking of trade secret management, don’t fall prey to the notion that you have to identify everything that could prove useful to the business. Even a hardware store doing inventory doesn’t count individual nails.” In the wake of urban unrest in the early 1960s, local governments imposed nightly youth curfews, and a Massachusetts legislator […]

Gathering Business Data? Be Careful, Mom is Watching – A Comment on Data Scraping and the Compulife Case

September 20, 2020

When people say that “data is the new oil,” they’re talking about new ways of creating wealth. No matter what business you’re in, success today depends on learning everything you can about your customers and competitors. And there’s so much information sloshing around the internet, every industry—from restaurants to manufacturers to sports teams—is busy extracting […]

Don’t Focus on the Fight: When it Comes to Trade Secrets, it’s the Transaction that Counts

August 30, 2020

Tuning in to the recent sentencing of Anthony Levandowski for criminal trade secret theft, I was reminded of the wise observation about relationships, that remembering the ending is a way to forget about the beginning. But while that way of thinking can be a salve for the heart, it’s not so helpful when it comes […]

Patents are from Mars, Trade Secrets are From Venus

July 26, 2020

Back in ancient times, in this case 1990, John Gray, an obscure “relationship counselor” with a correspondence degree in psychology, was perplexed. The communication problems of the heterosexual couples he worked with were so serious that he couldn’t explain them by individual circumstances. His clients seemed to be talking past each other, almost as if […]

Has China Finally Embraced Robust Trade Secret Protection?

June 14, 2020

“Although China has for some time now shown interest in trade secret reform, this week’s trade secret draft Judicial Interpretation undoubtedly was motivated in part by recent trade negotiations, including the Phase One Agreement. But this most recent pronouncement seems in some respects to go beyond what was required.” It happened to Japan in the […]

The Transmissibility of Information: How Your Trade Secrets Are Like a Virus

April 28, 2020

“Information wants to be free.” – Stuart Brand Stuart Brand, the creator of the Whole Earth Catalog, is famous for saying in 1984 that “information wants to be free,” which became a battle cry for anti-intellectual property activists. But this is what he actually said: “On the one hand information wants to be expensive, because it’s […]

Do Your ‘Home Work’: Keeping Trade Secrets Safe While Working Remotely

March 26, 2020

“Artists work best from home.” –Steve Wozniak If while you’re reading this you are stuck at home or some other location trying to work remotely, give some thought to 18th century self-proclaimed alchemist Johann FriedrichBöttger. As a young and ambitious man living near Dresden, he was convinced that he could actually make gold from base metals, […]

You Own It, Now What Are You Going to Do with It? – Why Trade Secrets Are Treated Like Property: Part 2

February 25, 2020

“Data that is loved tends to survive.”  — Kurt Bollacker In last month’s post, Part 1 of this series,we considered the view of European academics that trade secrets are not “intellectual property” because they don’t give the power to exclude others, like patents, copyrights and trademarks do. But considering that trade secrets are treated throughout the […]

It’s About Control, Not Exclusion: Why Trade Secrets Are Treated Like Property, Part 1

January 21, 2020

“Knowledge conquered by labor becomes a possession – a property entirely our own.” — Samuel Smiles Sometimes it seems that trade secrets are always fighting for respect. I recently ran into a friend who teaches at a European university. He somehow found a way to squeeze into the conversation a pronouncement: “You know, trade secrets […]

Trusting Your Secrets to the Government

December 23, 2019

“We’re from the government, and we’re here to help.”  — Anonymous According to Merriam-Webster, the “Word of the Year for 2019 is “they” when used in the singular, typically to avoid ascribing a gender to the person being referred to. The larger point is this: language matters. Since this is a space dedicated to secrecy, […]

The Dark Side of Secrecy: What Theranos Can Teach Us About Trade Secrets, Regulation and Innovation

September 25, 2019

“Any sufficiently advanced technology is indistinguishable from a rigged demo.” — James Klass The spectacular failure of blood-testing firm Theranos is the subject of a riveting book, Bad Blood by investigative reporter John Carreyrou, and an engaging documentary, “The Inventor” on HBO, focusing on Elizabeth Holmes, the once-celebrated wunderkind who dropped out of Stanford at age 19 […]

Trade Secret Diligence in M&A

August 5, 2019

When one company looks at buying another, the potential buyer engages in a “due diligence” process designed to help it fully understand the relevant risks and opportunities before the deal is done. In today’s digital economy, most business assets are intangible, and so intellectual property (IP) is among the most meaningful of the variety of […]

Five Tips for Keeping Safe with Your Head in the Cloud

July 17, 2019

Management of trade secrets is fraught with competing interests. There is the tradeoff between security and inconvenience—for example, the annoying wait for a special code to allow “two-factor identification” when you already have your password handy. There is trusting your employees while knowing they might leave to join a competitor. And there is the tension […]

Of Supply Chains and Fireworks: A Trade War with China is Easy to Lose

May 30, 2019

Over the course of two weeks, the United States has imposed tariffs on hundreds of billions of dollars of Chinese goods and has blacklisted Huawei, the world’s largest telecommunications company, on national security grounds. Google, Intel, Qualcomm and Micron have announced that they will stop doing business with the company. The United States has even […]

Some Progress in the International Effort to Harmonize Trade Secret Protection

April 25, 2019

In 1994, the United States was winding up the Uruguay Round of trade negotiations leading to the establishment of the World Trade Organization (WTO). Tucked in among the toothbrush and rice tariffs was the Agreement on Trade-Related Aspects of Intellectual Property. The TRIPS Agreement was seen as a breakthrough, setting common standards for protecting IP, […]

A Lack of Focus on Trade Secrets Can Pose Serious Risks

March 28, 2019

We all talk about the importance of data as business assets, but when it comes to buying and selling the companies that own them, we seem not to pay much attention. My anecdotal survey reveals that colleagues who focus on mergers and acquisitions  confess to a lack of focus on trade secrets. This may seem […]

Of Secret Sales and Public Uses: The Practical Consequences of the Supreme Court’s Helsinn Decision

February 21, 2019

When I use a word, it means just what I choose it to mean, neither more nor less — Humpty Dumpty (to Alice) It seemed like a trade secret trifecta when Congress in 2011 passed the America Invents Act (AIA). Although the statute was aimed at patent reform, it made three helpful changes in how […]

Trade Secret Disputes: Identifying Mutual Interest in the Face of Major Disagreement

January 25, 2019

I am willing to put the case into any shape you choose. – Lord Ellenborough, 1816 It’s a challenge to resolve business disputes when emotions run high, which includes almost all trade secret cases. So, I was especially pleased when, in a hard-fought litigation where I had been appointed as a “referee” to resolve discovery […]

Proprietary Techniques vs. Employee Rights: The Struggle to Balance Competing Interests

November 25, 2018

It’s football season, so of course we should be talking about beer. Specifically, beer secrets. For fourteen years James Clark had an enviable job at Anheuser-Busch, where he had access to the brewer’s confidential recipes. For unexplained reasons he resigned. Instead of joining a competitor, he went to see a lawyer about planning a class […]

Secrets of Social Media: Who Owns Social Media Accounts?

November 12, 2018

I’m sure that many people find it exciting to read about U.S. college athletics, although it’s hard to imagine how that could result in any trade secrets. But consider this: Andy Bitter, a former sports journalist covering the travails and triumphs of the Virginia Tech football team, was recently sued by his former employer, a […]

The Blades Just Keep Spinning

July 30, 2018

It was late 2010. The technician, an American in northwestern China, was performing a software check on a wind turbine when he noticed something strange. After the diagnostic program finished running, the turbine was supposed to stop. But this time the blades kept spinning. The same thing happened at the next turbine at the wind […]

The 700 Million Dollar Boomerang Lawsuit

June 20, 2018

It seemed like such a good idea at the time. Quicken Loans affiliate Title Source had signed an agreement with start-up HouseCanary to build specialty software. The relationship deteriorated, and Title Source sued to avoid the $5 million fee it had agreed to pay. To underscore its determination, it served the lawsuit personally on HouseCanary […]

How to Change Jobs and Embrace Inefficiency

May 23, 2018

In the wake of Uber’s blockbuster trade secrets lawsuit, prompted by its hiring of the manager of a competitor’s self-driving car program, one of the company’s lawyers published an articlecomplaining about the law that protects “negative information” stored in a person’s head. It was crazy, he argued, to force employees to feign amnesia and to deliberately […]

The Biggest Trade Secret Loophole You’ve Never Heard Of

May 2, 2018

Here in the U.S. we have a litigation system for pre-trial “discovery” that allows access to virtually every email and every record a company owns.  It costs businesses more than $40 billion every year.  Foreign countries, where there is no “discovery,” sneer at this self-inflicted injury, and foreign companies do all they can to avoid […]

Fishing for Trade Secrets

March 19, 2018

In a boat out on the lake, the little boy says, “Grandpa, why are we holding our poles out here?” I say, “Because that’s where I think the fish are.” “Will we catch any?” “I don’t know. Let’s wait and see.” To anyone familiar with the discovery process in U.S. litigation, involving production of millions […]

Waymo v. Uber Shows Even Epic Battles Can Be Resolved

February 18, 2018

There are many lessons to be drawn from Waymo v. Uber litigation. This is perhaps the most important. Lawsuits are about history, while business is about the future. By the standards of most litigation, the suit by Waymo (a Google company) against Uber was fast-tracked, getting to trial within a year after it was filed. […]

Searching for the Secrets of a Stradivarius

January 21, 2018

When the auctioneer’s hammer went down, the violin sold for almost $16 million. It was one of the masterpieces of Cremona, the small northern Italian town that was the 18th-century center of violin-making. Ever since, the world’s best violinists have insisted that instruments made by Antonio Stradivari and his colleagues demonstrate a uniquely wide dynamic range […]

When Failure Becomes an Asset

December 14, 2017

A light bulb turns on When Thomas Edison was asked about his years of searching for a long-lasting light bulb filament, he said, “I haven’t failed; I’ve just found ten thousand ways that won’t work.” Experimenting with materials ranging from platinum to beard hair, he eventually zeroed in on carbonized thread, and later, bamboo. At […]

The Art of Reverse Engineering

December 4, 2017

Recently a client asked me for advice on setting up a reverse engineering project.  The company had just hired a senior engineer from a competitor that had pulled ahead of them the year before with the release of a next generation product. They needed to respond soon. The new employee was “clean,” they assured me, […]

Choosing Between Patents and Trade Secrets, A Discussion Worth Revisiting

November 1, 2017

Patenting and secrecy are the two major methods of protecting technology that supports competitive advantage.[1] While this has been true for decades, the legal landscape in which businesses must choose between them has changed dramatically in recent years, mainly as a result of two forces. The first of these was a series of court rulings […]

The Most Dangerous Hire: Lessons from Waymo v. Uber

October 19, 2017

Every trade secret case is built around a story. Sure, the plaintiff’s story is different than the defendant’s, even though each draws on the same facts. For the rest of us that don’t have a dog in the fight, helpful lessons are available. But sometimes you have to look hard to find them. Here’s one. […]

How To Respond To A Claim of Trade Secret Misappropriation

August 8, 2017

It’s never good to get a letter accusing you of taking someone else’s property, or worse a lawsuit that can distract or disrupt your business. The key to a good outcome is to remain calm and make sensible decisions. This may be a challenge because the charges against you are freighted with emotion. You are […]

Was America’s Industrial Revolution Based on Trade Secret Theft?

July 5, 2017

When I was in Geneva trying to engage developing countries about the value of robust IP laws, occasionally I heard a response like this: “What hypocrites you are! The U.S. economy got its start by stealing from abroad. Why should today’s poor nations be denied the same opportunity to catch up?” The argument stung enough […]

What Divorce Court Teaches About Trade Secret Litigation

May 25, 2017

I still remember the day I decided never to do another divorce case. My client called to tell me that her ex was taking the kids to his mother’s house where she would look for holes in their socks and then rip them with her fingers. This surely was grounds for a restraining order! No, […]

When Taking Trade Secrets Becomes A Crime

April 28, 2017

In the recent lawsuit filed against Uber by Waymo for hiring the head of its driverless car project, what would have been a normal discovery dispute over access to a report suddenly became a lot more complicated when the former Waymo executive asserted the fifth amendment, claiming that forcing disclosure of the document could incriminate […]

Losing Trade Secrets To Foreign Companies: How To Reduce The Risk

March 1, 2017

During a recent seminar I was asked, “What can companies do to stop the loss of trade secrets to places like China?” The questioner seemed stressed and a bit angry, perhaps reflecting a certain frustration that there may not really be an answer. While I can understand the concern, and although there is no way […]

How To Recruit And Hire While Avoiding Data Contamination

February 1, 2017

When we think about trade secrets, we usually focus on keeping our own data safe. But an even bigger risk comes from hiring employees who can infect our systems with confidential information from a competitor. Companies often learn this the hard way. Boeing’s hiring several managers from Lockheed led to a $615 million fine and […]

When Employees Leave With Your Secrets

January 28, 2017

Recently I shared the podium with an FBI agent who was asked what frustrated him the most when trying to help businesses with trade secret theft. His answer was a surprise: they fire the guy too fast! He explained that when you discover someone might be mishandling information, your most important objective is to know […]

Quick Notes

January 1, 2017

Whistleblowers – The first court opinion addressing DTSA whistleblower immunity (18 U.S.C. §1833(2)) was issued on December 6 in Unum Group v. Loftus, 2016 WL 7115967 (D. Mass.). The plaintiff alleged improper taking of company documents by an employee and requested an injunction prohibiting their copying and compelling their return. Although evidence suggested that Loftus […]

What Efforts Are "Reasonable" To Protect Your Trade Secrets?

November 21, 2016

The trade secret laws of most countries – including the recent U.S. federal Defend Trade Secrets Act – contain the same requirement: in order to enforce its rights, a trade secret owner has to show that it has made “reasonable efforts” to protect its information from loss. In other words, before judges get involved in […]

The Most Cost-Effective Way You Can Protect Your Trade Secrets

October 28, 2016

I was giving a talk recently when a senior executive asked me, “If we have the time and resources to focus on just one thing to improve our information security, what would you suggest?” I didn’t hesitate: “Train your workforce.” As we know from multiple studies, the biggest threat to information assets comes from “insiders,” […]

How Should You React When You've Been Accused of Trade Secret Theft?

September 28, 2016

“The greatest victory is that which requires no battle.” --Sun Tzu Recently I got a call from a client who had just received a letter from a competitor, complaining about an executive the client had hired, and threatening to sue. My client was a young company that had never experienced this sort of threat. But […]

New Risks in Warning Letters To Departing Employees

August 16, 2016

It’s a fact of business life that employees leave to join a competitor or start a competing business, armed with confidential information that is suddenly put at risk. While you want to protect those assets, pulling the trigger on litigation may be premature. Unless you have evidence that you’ve been ripped off, a concise warning […]

Be Careful What You Wish For

July 18, 2016

The new Defend Trade Secrets Act for the first time lets you file your case in federal court. but just because you can do it doesn't necessarily mean you should. Federal court provides a lot of advantages for certain kinds of disputes. But there can be a downside. The easy decision is in a case […]

The Billion-Dollar Trade Secret Verdict

May 28, 2016

Well, not quite. But $940 million is a lot of money, and that's how much a federal court jury awarded on April 15, 2016 to Epic Systems, a Wisconsin healthcare software company, against the U.S. subsidiary of Tata Consultancy, part of the Tata Group headquartered in India. There may be a lot of lessons to […]

Patents or Trade Secrets Do You Really Have to Choose?

April 28, 2016

Back in 1974, when a lot of people thought that trade secret law couldn't survive alongside a patent system that encouraged public disclosure, the Supreme Court in the Kewanee case patted us on the head and said, "don't worry," assuring us that anyone with a patentable invention would be crazy to elect secrecy instead. Patents […]

No, You Don't Have To Inventory All Your Trade Secrets

February 28, 2016

Hardly a week goes by without seeing a post or article by some well-meaning lawyer who insists that the first step in protecting your trade secrets is to know what you have, therefore you need to do an "inventory." That's only half right: knowing what you own is critical, but you don't have to create […]

Six Ways To Keep Trade Secrets Offline

February 23, 2016

You can be sure that most of your employees are active on social media. For younger ones, in fact, Facebooking, Instagramming, and Tweeting are as natural as breathing. But suppose an employee shared pictures of your product prototype? Posted a draft patent application your company was about to file? Messaged a Dropbox link with confidential […]

The Case of The Buried Non-Disclosure Agreement

January 5, 2016

Last month Caterpillar was hit with a $74 million jury verdict for trade secret misappropriation in the Eastern District of Illinois. The case was filed by Miller, a UK vendor that supplied Caterpillar with "couplers," a product that allowed quick changes of tools on excavators. After Caterpillar told Miller that it was switching to use […]

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