Figure I26

A schematic illustration of the structure of a dendrimer.

a core functional molecule, there are successive "generations" of molecules built up in branches, producing a structure that resembles a tree (or any of a variety of other fractal-type structures). Proposals for using dendrimers in drug-delivery applications arise from the fact that they can be fabricated to be "artificial cells"—they have a relatively hollow core surrounded by a compact surface and may be synthesized to have a total size similar to that of cells. The surface acts to encapsulate the drug until it can be delivered very precisely to the area of a body where it is to be applied.

In this example, scientists at NanoD have developed a synthesis technique that greatly reduces the cost of producing their particular dendrimer structure. Recognizing the potential for this technique to provide it with a competitive advantage, NanoD decides not to disclose it in any way—they do not file for a patent application and they prevent the scientists from publishing papers describing it or talking about it at conferences.

But suppose that the scientists were, in fact, unaware of some relevant research by others that disclosed the same technique. In that case, the technique would not qualify as a trade secret no matter what actions NanoD took because of the first factor mentioned above, that is, the information was generally known to the relevant portion of the public. In applying this factor, the actual knowledge of the company and its scientists is irrelevant. All that matters is that the information was already known. This is not a surprising result—a state of ignorance on the part of those who develop information should not be the basis for generating intellectual-property rights.

The converse to this scenario is where the NanoD scientists were the first to develop the synthesis technique, but it was later disclosed by someone who learned it from them. When such a disclosure is made improperly, it will not necessarily defeat the status of the information as a trade secret. This is particularly true if there are ways of minimizing the extent of the disclosure so that it never becomes readily accessible to the public at large.

The second factor is, in some ways, more interesting. It is important to recognize that this factor requires that the secrecy of the information provides some economic benefit. It is not enough that the information itself provide such a benefit. For instance, in this case, it is apparent that the efficiency that the technique provides permits costs to be reduced for NanoD and that it thereby enjoys some economic benefit. But does the secrecy of the technique also provide an economic benefit? While the answer to this question is almost certainly yes, it is not as immediately apparent that it must be so. It is possible to imagine scenarios that at least lend themselves to arguments that the secrecy is not providing an economic benefit. Suppose, for instance, that no other company uses the same dendrimer structure because NanoD holds a patent on it, and the technique is of value only in producing the dendrimer structure used by NanoD. In such a scenario, is the secrecy of the technique providing any economic benefit to NanoD or is it merely the application of the technique itself that provides all the economic benefit?53

The third factor is undoubtedly the most interesting. It is not enough merely to be in possession of some valuable secret information to enjoy the benefits of trade-secret laws. There must, in addition, be some active efforts to maintain the secrecy of the information. An important part of the activities of virtually every nanotechnology company should include implementing a trade-secret program to enjoy the benefits that trade-secret protection provides.

The level of effort should be approximately commensurate with the importance of the secret. In most cases, it is not necessary to lock the only copy of the information in a vault that is watched by a full-time guard. But, at a minimum, copies of the secret information should be identified as confidential and access to the secret information should be limited to those in the company who have a legitimate need to know it. Restricting access to information may be performed physically, such as by having areas that only some employees are permitted to enter. Access may also be restricted technologically by using software protections to limit those who have electronic access to certain information.

Other actions that should be taken with employees of the company include programs to educate them about trade secrets. They should understand the need to mark materials as confidential, have nondisclosure agreements executed when there is a reason to be discussing a trade secret with someone outside the company, and so on. It is preferable that employees sign an employment agreement in which they acknowledge the value of the company's trade secrets and agree to keep them confidential. When employees leave the company, an exit interview should be conducted in which they are reminded that their obligations to maintain the confidentiality of the company's secrets continue even after their employment ends.

It is also best if security mechanisms are in place at the company so that visitors will not improperly have access to secret information. They should be required to sign in and out when they visit and should have an escort whenever they are in areas where trade-secret information might be available. If visitors are to be shown trade-secret information, they should be warned that the information is confidential and asked to sign nondisclosure agreements in which they agree to keep it confidential.

Of course, this is not an exhaustive list of the steps that need to be taken to preserve the confidentiality of trade secrets, but it does give a flavor of the kinds of activities that courts will look to in evaluating whether the third requirement has been met. There is, thus, some effort involved in maintaining trade secrets and a decision inevitably needs to be made whether some piece of information should be protected as a trade secret or protected using some other form of intellectual property. Almost always, this decision amounts to deciding whether to apply for a patent and disclose the information in the patent application or to keep the information as a trade secret.

0 0

Post a comment