Chadbourne's Trade Secret Practice

Publication January 11, 2016

High employee mobility is a reality of today’s highly competitive, global economy, especially in the financial services, high-technology and start-up industries. The risk of an existing or former employee leaking valuable information to a competitor or leaving with your valuable trade secrets is greater than ever. Companies can no longer afford to overlook business critical formulas, techniques, processes, data, business strategies, customer/supplier information and other compilations of information that set them apart from competitor. Having effective trade secret/confidential information policies and procedures in place is essential.

Employee/Workplace Policies and Practices 

Chadbourne deploys a cross-disciplinary team of lawyers— including intellectual property, employment, antitrust, and privacy/data protection attorneys—to assist you in implementing and maintaining effective trade-secret policies and procedures tailored to your particular industry and to the various states in which you operate. This includes:

  • Conducting trade secret audits to identify trade secrets requiring protection
  • Implementing comprehensive, tailored trade secrets policies and procedures to protect trade secrets
  • Drafting employee non-disclosure and invention assignment agreements tailored to each jurisdiction
  • Drafting non-competition and non-solicitation provisions tailored to each jurisdiction
  • Advising clients with respect to the on-boarding and exiting procedures of large groups of employees
  • Training of employees and businesses on the handling/protection of trade secrets and confidential information
  • Providing practical advice to individuals/entrepreneurs on how to manage their transition from one company to a new venture/company
  • Advising and assisting client in implementing clean-room development programs

Trade Secrets in Business Transactions

Chadbourne attorneys have significant experience assisting clients in maintaining and extracting value from valuable trade secrets and confidential information in the context of business and corporate transactions. This includes:

  • Conducting trade secret due diligence to identify key trade-secret risks
  • Drafting and negotiating non-disclosure agreements and confidentiality provisions in business/technology agreements with third parties
  • Drafting, structuring and negotiating trade secret, know-how and technology licenses
  • Drafting non-competition provisions in corporate agreements
  • Drafting and negotiating software/technology escrow agreements for mission critical applications

Trade Secret Misappropriation - Litigation/Enforcement

Over the past ten years, Chadbourne attorneys have had a number of successes representing clients in all stages of trade secrets litigation, including trial, both in the enforcement of our client’s rights and in defense. Our representations have involved:

  • Enforcement of restrictive covenants: non-competition and non-solicitation agreements
  • Misappropriation of trade secret computer software algorithms
  • Unfair competition between competing semiconductor chip makers
  • Misuse of client customer lists
  • Breach of contract and misappropriation relating to software and website agreements.

Representative Matters

Rockwell Automation. Representing global leader in factory automation in asserting unfair competition claims in the District Court for the District of New Jersey (D.N.J.) relating to an unauthorized internet reseller of its products.

Software Company. Representing a  software provider for the Oil & Gas industry in the alleged misappropriation of computer algorithms.

Telecommunications Company. Represented a nationally recognized telecommunications company specializing in advertising software in the assertion of its rights relating to a competitor’s theft of its trade secrets in the District Court for the Southern District of New York (S.D.N.Y.).

EnergySolutions. Represented a global leader in the safe processing and disposal of nuclear material in New York state court in a litigation that involved allegations that the defendants breached their employment agreements and misappropriated plaintiff’s trade secrets.

9mmedia. Represented a software design firm that develops web and mobile applications relating the alleged misappropriation of computer source code and the breach of
related contracts.

Debtdomain. Represented a financial software developer in a case in the S.D.N.Y. involving the alleged misappropriation of computer source code and a graphical user interface (GUI).

Microsemi Corporation. Represented semiconductor company in asserting breach of contract and misappropriation of trade secrets claims in the S.D.N.Y.

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