Client Services / Intellectual Property / Trade Secrets

Trade Secrets

McDermott Will & Emery has a multidisciplinary team of more than 100 lawyers worldwide who understand the nuances of trade secrets and related transactions and disputes, and are dedicated to protecting the trade secrets of clients around the world.

We have protected and enforced trade secrets involving a wide range of consumer, industrial and advanced technology products, including telecommunications equipment, gaming equipment, software, chemicals, seed products, aerospace vehicles, life sciences products (including stem cells), hard disk drives and media, paint manufacturing technology, biomedical imaging, semiconductor design, process, manufacturing equipment and packaging, and power tools.

McDermott lawyers provide multidisciplinary trade secret counseling that not only encompasses disputes concerning intellectual property rights, but emphasizes designing and implementing appropriate confidentiality and non-disclosure agreements and their effective application in business transactions.   Whether the need is for aggressive representation in court or representation at the negotiating and drafting tables, clients ranging from startup companies to Fortune 500 multinationals rely on McDermott to ensure the strategic effectiveness of their investment in trade secrets and confidential information. 

Intellectual Property Enforcement

McDermott’s intellectual property trial lawyers have pursued trade secret protection and enforcement actions for clients in dozens of industries, ranging from high technology and life sciences technology companies to manufacturing, financial services and entertainment companies.   We have handled hundreds of trade secret lawsuits and disputes over the past 25 years, in venues ranging from state and federal courts throughout the United States to the International Trade Commission and other multilateral tribunals.  We have obtained temporary restraining orders and preliminary injunctions, and have won jury trials, including awards of punitive damages, under theories such as actual or threatened misappropriation under the Uniform Trade Secrets Act. 

We have also assisted trade secret defendants in successfully opposing temporary restraining orders and preliminary injunctions.   Our lawyers have obtained defense jury verdicts at trial, and pursued successful counterclaims under a variety of business tort theories.

Unlike some other forms of intellectual property enforcement, a trade secrets lawsuit often arises with no notice and requires immediate and extensive work.   In such high-pressure situations, our lawyers excel at obtaining necessary remedies before irreparable harm results from the misuse or unauthorized disclosure of stolen secrets, and at defeating unfounded claims of misappropriation that can jeopardize the future of a company or individual.  If trade secret litigation involves parallel criminal proceedings, a critical element for success is our experience in such parallel proceedings and our excellent relationships with numerous federal, state and local law enforcement authorities, along with United States attorneys and local district lawyers in venues around the United States.

Antitrust & Competition Law

Our lawyers are particularly effective in helping clients navigate the intersection between trade secret protection and antitrust law.   Certain business practices focus on the competitive advantage gained from the acquisition, use or licensing of confidential information and trade secrets.  In licensing arrangements, joint ventures or strategic alliances, clients rely on us to handle the regulatory and antitrust implications of trade secret protection, and to defend their rights in court if necessary. 

Business Transactions

We appreciate that it is vital to protect trade secrets and confidential information in mergers, acquisitions, joint ventures, licensing agreements and other commercial transactions designed to leverage or exploit intellectual property assets.   In mergers and acquisitions where principal assets include trade secrets, our lawyers assist in investigating and assessing the target’s overall trade secret policy, from identifying information to be protected as trade secrets, to the steps taken to protect those trade secrets (including, where possible and practical, ensuring that no individual person or entity receives all of the information necessary to duplicate or practice the trade secret), to ensuring that those who have developed or had access to the trade secrets are subject to appropriate confidentiality obligations.  In joint ventures, licensing and other commercial transactions, our lawyers go beyond simply including confidentiality provisions.  We assist in drafting customized security provisions and in identifying what aspects of the trade secret, if any, can be held back and not shared without jeopardizing the client’s overall business objectives.

Employment Law

Our lawyers handle enforcement of trade secret rights as part of restrictive covenants that bind former employees, and also advise new employers who have hired individuals bound by such covenants.   We regularly obtain injunctive relief enforcing employers’ rights, and frequently litigate contractual disputes relating to alleged breaches of confidentiality and trade secret restrictions.  Our counsel is often proactive, as we help companies adopt trade secret protection programs and educate their employees about the importance of ensuring the confidentiality of trade secrets and other sensitive information.

International Law

Particularly in emerging markets, it can be extremely challenging to secure trade secret rights without fully developed statutory protection under intellectual property, competition and employment law.   McDermott lawyers in our global trade secret practice are skilled at practical trade secret protection strategies, particularly in joint venture and licensing agreements with local business partners.

Contacts

Intellectual Property Client Services

McDermott Will & Emery

McDermott Will and Emery