Reflections- 18 April – 22 April 2022

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A REPORT ON WEBINAR ORGANIZED BY THE ESQ WEBINAR SERIES ACADEMY

TOPIC:  ADVANCED TRADE SECRETS 2022: NEW RISKS, NEW CHALLENGES, NEW IDEAS

HOST: Funke

INTRODUCTION

The webinar started at 3:03 pm with the host introducing the topic as well as the speakers for the webinar, namely Mr. Okikiola Litan and Mr. Dapo Akinosun (SAN).

DISCUSSION

Mr. Litan stated that trade secrets are so valuable and to lose them would be catastrophic for the business. He stated that there’s no universally accepted definition of trade secrets but some criteria have emerged in determining what it is; (1) it is not generally known, (2) the proprietor must have taken extra steps to keep it a secret, etc.

Trade secrets must be such that their value must be quantifiable. Things like a computer programs, microchips, information relating to business processes, technical drawings, source code, etc. can be trade secrets.

With other intellectual property rights protection, you have to disclose it, but trade secrets are such that the proprietor is expected to take steps to keep it a secret. The advantage it gives is that it has no limitation as to time or geographical location.

As regards emerging issues in trade secrets, the first issue he noted was that the disruption brought by Covid-19 led to companies inventing various protective gears like face masks, face gears, etc. They were rushed into the market without any thought as to what protection to give to their products. We also had cases of employees moving on to other companies and taking with them all the secrets they learned while working on these products of their former employer.

Secondly, disposal of old computers can be an issue as one may have stored sensitive information connected to his work on that device’s memory. He thus suggested that one should ensure he wipes his old device memory before disposing of the same.

Thirdly, remote working. Companies resorting to utilizing virtual platforms for remote working did not take into cognizance the possibility of such platforms being vulnerable to cyber-attacks.

Mr. Litan also talked about reverse engineering. He gave an example of how some countries were reluctant to supply weapons to Ukraine in the ongoing Russia-Ukraine war for fear that these weapons, if fallen into the wrong hands, could be reversed engineered and whoever is in possession of it would then learn their secret.

One of the ways to ensure trade secrets are secured, Mr. Litan suggested, is to regularly conduct trade secrets audits. Also, a combination of intellectual property rights may offer better protection. He further suggested organizing seminars and programs on trade secrets, what it entails, and what kind of protection they can afford its owner.

Mr. Ifeoluwa Fashola, who stood in for the Learned Silk, noted in his presentation that organizations need to pay attention to their security architecture. Thus, they need to have IT professionals who would instore a firewall.

In handling trade secrets disputes, you should engage the violator immediately. Serve him a “cease and desist” letter, so as to ensure there is no further breach of your trade secrets. You also want to quickly arrive at a resolution – you want to know why the violator is acting the way he/she is, and this will help you understand better what is going on and direct your next step. Furthermore, the in-house counsel should commence an investigation, gather evidence and form your theory of what has happened. This will aid you if you go to Court eventually.

Mr. Fashola further stated the importance of preserving evidence as this will be presented to the external counsel in building your case in Court. You also want to control the spread of that particular trade secret that has been divulged.

Mr. Fashola however noted that depending on the circumstances, an amicable settlement may not be sufficient. You may then go to Court to obtain remedies. You should get a restraining order against the violator regardless of whether you’re going to Court or pursuing an amicable settlement. The advantage this gives is to curtail the spread of the trade secret and prevent it from getting to the hands of competitors.

He further advised that maintaining a civil action is important as even where the violator of a trade secret is liable to a criminal proceeding in Court, the punishment that will ultimately be meted out has already been provided by law. If it is inadequate, the victim will be left with no remedy. So, he advised that you maintain your civil action so as to claim damages for every wrong done to your client.

In the question/answers session, Mr. Fashola noted that both criminal proceedings and civil action can commence at the same time with regards to a matter proceeding from the same set of facts or transactions.

He also stated that though there is no single Trade Secrets Act, you will find trade secrets protection in Laws and Acts regulating competition; the various IP Laws; as well as common law. Additionally, clauses in transaction documents between two or more entitle can contain non-compete/non-circumvent provisions. And this offers some protection.

Mr. Fashola also noted that we can have clauses in an employer/employee contract that provides for when the relationship is terminated, you will not take a role in a competitor within a period (between a few months to a year) but it should not be too long otherwise it will run foul of laws prohibiting restriction to trade.

Mr. Litan added that there’s a difference between the “know-how” you gained on the job and trade secrets. Trade secrets clauses should be clearly worded otherwise the Courts will strike them down.

CONCLUSION

Funke thanked the speakers and appreciated the sponsors of the webinar, and attendees. The webinar ended at about 4:45 pm.