Presentation on Trade Secret Protection - Dr. Kalyan C. Kankanala Contact Us for Intellectual Property Services BananaIP Counsels Regd Office No.40,3rd Main Road,JC Industrial Estate, Kanakapura Road,Bangalore – 560 062. Email: contact@bananaip.com Telephone: +91-80-26860414 /24/34

1. Trade Secret ProtectionTrade Secret Protection
Dr. Kalyan C. Kankanala,
BananaIP
Blog: www.bananaip.com/sinapse-blog

2. Overview
 Historical Development
 Rationale
 Terms
 Real vs. Trade Secrets
 Differences

3. Trade Secret
 Elements
 Independent economic value
 Generally known or readily ascertainable
 Proper means
 Persons
 Reasonable Efforts

4. Trade Secret
 Reasonable efforts
 Express duty of non disclosure via
 Employment agreements
 Non-disclosure agreements
 Entrance and Exit interviews
 Restricted access
 Marking
 Security system and policy

6. Misappropriation
 Conduct which results in obtaining
trade secret information by improper
means constitutes misappropriation.
 ‘Imrproper means’
 Criminal Conduct
 Breach of Contract
 Tortious liability

7. Defenses
 Independent Creation
 Reverse Engineering

8. Remedies
 Injunction
 Damages
 costs

9. Niranjan v. Century Spinning
 Employee - Training
 Confidentiality and Non-compete clauses in
employment agreement of 5 years
 Joined competitor
 Injunction against disclosure
 Restraint during term of agreement valid
AIR 1967 SC 1098

10. Mundipharma AG Vs. Wockhart
 Polyvinyl pyrolidone-Iodine (PVP-I)
 License to sell preparations - 'Betadine' and
Isodine
 Confidentiality of manufacturing processes
 Non-compete clause
 Held not valid as information not confidential
ILR 1991 Delhi 606

11. Case 1
 Salsbury
Met with higher ups before joining
Worked on the same project
Took valuable documents
Wrote an article criticizing the project

12. Case 2
 Pioneer v. Holden
 Seen around farms
 Managed to hire a key person
 Acquired data related to breeding

13. Indian Law
 Trade Secrets
 Contract
 Trust/Relation of Confidence
 Criminal Law
 IT Act
 Official Secrets Act

14. Patent v. Trade Secret
 Three areas of conflict
 Patentable
 Partially patentable
 Not patentable
 Factors

15. Patent and Padlock
 Overprotect
 Exploit the overlap
 Build a wall
 Lay a mine field
 Fall back position
 Patent and Padlock

16. – Thank you
– For the ppt and further information
www.bananaip.com/sinapse-blog