“Why would a group of trade mark lawyers be talking about trade secrets?” asked Michael Grow of Arent Fox at this afternoon’s Annual Conference session Design Your Secrets, while fellow speaker Donal O’Connell of Chawton Innovation Services noted that trade secrets used to be “the neglected step-child of IP”. Today, that has changed, and this session delivered a mix of law, romance, rare liquors, sports, religion and politics.

Virtually all brand owners potentially own trade secrets, such as customer lists, said Michael. In the US, the number of trade secrets cases has increased exponentially in recent years: about 90% of cases involve employees seeking to make money from confidential information. Donal pointed out that recent legislative reforms in the US, Europe and China, increased litigation, cyber crime, open innovation, the nature of employment and trade wars as well as the growing interest of tax authorities, exemplified by the OECD BEPS guidance, add to the need to pay attention to trade secrets.

Michael set out the provisions of the 2016 US Defend Trade Secrets Act, including which factors courts will look at in deciding whether there is protection and what remedies can be imposed. “Even a foreign national, or a foreign company, that commits an act abroad that has an effect in the United States can be subject to prosecution under US law,” said Michael.

Measures recommended by Michael include: conduct audits; limit access to information; store trade secrets securely; and use confidentiality labels. “It’s important to do this because people move from job to job much more, and technology enhancements facilitate cyber theft,” he said. Well-known trade secrets include Chartreuse, Kentucky Fried Chicken, Match.com, Thomas’ English Muffins, Twinkies, WD-40, the Google algorithm and the Krispy Kreme recipe and warming method.

Claudia Pappas of Thyssenkrupp Intellectual Property discussed the measures taken by her company to comply with the new EU Trade Secrets Directive. It has adopted a three-stage process: classification, securing tools and protection processes. It also has a Strategic Trade Secrets Council at the corporate level.

Questions from the audience in the session, which was moderated by Tove Graulund of Graulund Consulting, included: whether and how to account for trade secrets assets, whether there is a difference between intellectual property and intangible assets, enforcement, communication and how to manage trade secrets in practice. Keeping control is key, said Donal: “A significant number of trade secrets cases involve your friends,” he warned.