In light of Convolve and MIT v. Compaq and Seagate (Fed. Cir. 2013), a trade secret and patent infringement case, the Federal Circuit ruled in part that contracts can affect whether trade secret misappropriation tort actions can be sustained.
Convolve and MIT involved a contract “marking” clause (requiring confidential information to be marked “Confidential”), assertions of trade secret misappropriation with an NDA having such a marking requirement — will not succeed if measures aren’t taken to mark information as “Confidential” as required in such case.
TAKE-AWAY: Mark your trade secrets as “CONFIDENTIAL” or be subject to loss of such trade secret.
The Convolve case reiterates this issue in the context of a patent infringement case.
As always, reasonable steps must be taken to protect your trade secrets. Don’t leave trade secret information out in the open, where unauthorized persons can get to them. Ensure that there are written policies that employees and contractors are aware of, if they aren’t already. Be ready to show the necessary documentation and evidence that you took such reasonable steps to protect your trade secrets.
Michael A. Long, Esq.
ATTORNEY AT LAW
Over 20 years in business and law combined. Achieved highly favorable outcomes for clients in high-stakes litigation. California & USPTO-licensed.