Bench & Bar May/June 2025

PROTECT BUSINESS PROPRIETARY INFORMA TION/TRADE SECRETS Many businesses are unaware of the broad scope of information, in-house procedures, etc., that can and should be protected as trade secrets and fail to take the needed steps to protect their rights in the first place. Businesses must take early and ongoing steps to identify sensitive business informa tion such as by conducting periodic audits. Once proprietary information of a business has been identified, consideration should be given to how to best protect that infor mation. In general, it is wise to implement a company-wide practice of compartmen talizing, i.e., restricting access to potentially sensitive or confidential information exclu sively to employees who require access to such information to perform their duties. If the information is not appropriate for tradi tional intellectual property protections and has been kept secret, trade secret protection may be appropriate. Businesses must clearly communicate the importance of preserving trade secrets to existing, new and prospective employees, such as by clearly spelled-out provisions addressing trade secrets in employment agreements. In addition, employers must be diligent in reminding soon-to-be former employees of their ongoing duty to main tain trade secret confidentiality in exit interviews, and in requiring such employees to sign Employee Separation Agreements or Termination Statements listing busi ness information known to the employee to be trade secrets and acknowledging the employee’s obligation to maintain the pro prietary nature of the trade secrets. Businesses should also consider requir ing employees and new hires, particularly those who will require or may have access to sensitive business information/trade secrets while performing their duties, to sign non-disclosure agreements (NDAs) as a condition of employment. A well-drafted NDA addresses at least the following points:

• Who are the parties to the NDA? In this situation the parties are typically the employer and the employee/new hire. • What information is deemed to be sensitive, confidential or pro prietary? Is all information dis closed to the employee deemed confidential or only information so marked? Does the information have to be specifically marked “Confidential” to fall under the scope of the NDA? Is the confi dentiality restricted to written disclosures, or is orally disclosed information also subject to con fidentiality provisions? If con fidential information is to be disclosed orally, what are the spe cifics of how the confidentiality of the information is conveyed? Conventionally, oral information can be deemed confidential if the employer confirms in writing to the receiving party that the infor mation is confidential. The NDA should clearly delineate how confidential information is to be identified by the employer. • The NDA should clearly define the obligation of the receiving party to: 1) keep the disclosed confidential information a secret; and 2) take reasonable steps to prevent access to the confidential information by third parties. • What is excluded from the ob ligation of confidentiality? Typ ically information is excluded if it is: 1) already known to the recipient; 2) already public infor mation, as long as the recipient was not the person who disclosed the information to the public; 3) independently developed by the recipient without use of the confidential information of the employer; 4) disclosed to the re cipient by a third party who has no obligation of confidentiality to

the employer; or 5) disclosed by the recipient as a requirement of a legal process. • What is the term of the agree ment? While certainly the em ployer would like the NDA to remain in force forever, this must be balanced against the reality that courts do not view perpet ual obligations favorably and in any event most information has a limited shelf life. The “reason able” term for an NDA will vary by industry, although 2 to 5 years is common. Other clauses important to a well-drafted NDA may include: specifying jurisdiction, i.e. , in what court(s) can action be brought in to enforce the NDA; specifying availabil ity of injunctive relief to the employer to stop a breaching act rather than solely rely ing on monetary damages after the act has occurred; and specifying that the disclosure of information by the employer does not in any way represent a transfer of any rights to the employee. WHAT IF BUSINESS PROPRIETARY INFORMATION/TRADE SECRETS HAVE BEEN MISAPPROPRIATED? Causes of action for trade secret misappro priation are available under a wide range of common law, state law, and federal law sources: Common law tort/unfair competition. Prior the development of the Uniform Trade Secrets Act “UTSA” (see below), improper use or disclosure of a trade secret was tradi tionally a common law tort. There are three fundamental elements to a trade secret tort claim:

( 1 )

The subject matter involved must qualify for trade secret pro tection. U.S. courts widely adopted basic

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