Protecting IP and Trade Secrets in a Time of Supply Chain Shortages
Summary
TLDR泰瑞尔·米勒,作为Foley and Lardner LLP的知识产权合伙人和注册专利律师,在采访中讨论了供应链短缺期间如何保护贸易秘密和知识产权。他指出,由于劳动力短缺和供应链中断,对专业工具的需求增加,为不诚实的竞争对手或公司提供了复制或仿制设备的机会。米勒强调,企业需要确保其贸易秘密得到内部和外部的保护,包括与员工、供应商或承包商的合同保护。他还建议,对于无法通过贸易秘密保护的信息,应考虑专利保护,并在关键市场国家进行专利申请。此外,他还提出了许可设备而不是直接出售,以保持对设备使用的控制。
Takeaways
- 🛠️ 在供应链短缺时期,公司更容易遭受敏感技术被盗的风险,主要原因是劳动力短缺和供应链中断。
- 🔍 特定行业如油田行业对专业工具的需求增加,这为不法竞争者提供了复制或仿制设备的机会。
- 🤔 短缺情况加剧了潜在买家可能购买假冒或未经授权设备的可能性,他们可能故意忽视真实性问题。
- 🏢 威胁可能来自公司内部员工,也可能来自第三方,如竞争对手或分销商,他们可能在寻找替代品。
- 📈 公司可能因为急需工具而忽视知识产权保护,采取“故意无知”的态度。
- 🔑 保护知识产权的关键在于保护贸易秘密和专利,确保这些信息不被公开或容易逆向工程。
- 📝 合同中应包含禁止逆向工程和保护贸易秘密的条款,以防止信息泄露给竞争对手。
- 📁 贸易秘密的保护需要内部管理和外部合同的双重保障,比如密码保护文件等。
- 🌐 专利保护是保护创新工具的重要手段,需要在相关市场或潜在市场所在国家进行申请。
- 📚 公司应考虑通过许可而非直接销售设备,以保持对工具使用的控制权。
- 📈 在国际或全球供应链中,某些国家可能不尊重外国知识产权,使得知识产权保护和执行更加困难。
Q & A
为什么当前供应链短缺时期,公司更容易遭受敏感技术被盗的风险?
-主要原因是最近的劳动力短缺和供应链中断。这增加了对专业工具和设备的需求,特别是在油田等行业。当这些工具和设备出现短缺时,不诚实的竞争对手或公司,甚至有时是自己的分销商,可能会寻找机会复制这些工具和设备,并将其推向市场,通常对合同保护和知识产权保护视而不见。
供应链短缺如何加剧了技术被盗的风险?
-短缺意味着潜在买家可能更愿意忽视问题,不提出正确的问题,表现出一种故意的无知态度,他们可能知道通过询问一些问题就能发现他们想要购买的设备或工具不是正宗的。
技术被盗的风险主要来自哪里?是公司内部员工还是第三方?
-风险来自两个方面:一是内部员工可能在从一家公司转到另一家公司,特别是竞争对手时,可能会带走一些商业秘密或专有信息;二是随着需求的增加,特别是在油田行业,公司迫切需要设备,因此可能会寻找第三方供应商来复制这些工具,而忽略知识产权保护。
如何通过合同保护来防止技术被盗?
-可以通过与分销商或客户签订合同时包含禁止反向工程或试图了解商业秘密的条款来保护。此外,还可以考虑将设备作为租赁或租赁安排许可出去,而不是直接出售,这样可以保持对设备使用的控制。
专利保护在防止技术被盗方面扮演什么角色?
-专利保护对于保护那些已经公开、分销商和客户可以看到并可能反向工程的工具和设备至关重要。专利可以保护那些有用的发明,这些发明不受商业秘密保护,因为它们已经被公开。
为什么需要在多个司法管辖区申请专利保护?
-专利保护是地域性的,仅在申请保护并获准的国家有效。如果只在特定国家如美国有保护,那么在加拿大、墨西哥或其他地区则不受保护。因此,需要在预计市场发展的国家或地区申请专利保护。
在全球化的供应链中,哪些地区的风险特别高?
-某些国家可能对外国知识产权的尊重不如发达国家,甚至一些发达国家也不真正尊重外国知识产权保护。此外,这些国家很难执行知识产权,因为当地法院可能不愿意损害本国经济,去执行针对本国企业的外国知识产权。
在当前供应链短缺时期,公司应如何加强保护商业秘密和知识产权?
-公司需要确保他们正在采取的保护措施得到彻底实施。这包括保护商业秘密,确保与分销商或客户的合同中包含禁止反向工程的条款,考虑通过许可而非直接出售设备来保持控制权,以及确保在关键司法管辖区申请并维护专利组合。
如何确定哪些司法管辖区需要专利保护?
-需要有前瞻性地考虑市场可能发展的国家或地区,并在这些地方申请专利保护。如果设备或工具是创新的,并且尚未在市场上以你试图专利的形式推出,就需要预测市场发展的方向。
在供应链短缺时期,公司如何平衡对工具和设备的需求与知识产权保护?
-公司需要在确保业务运营的同时,采取额外的措施来保护其知识产权。这可能包括加强内部保密措施、与员工和合作伙伴签订更严格的合同,以及在关键市场申请和维护专利。
为什么说保护知识产权不仅仅是采取额外的步骤,而是确保现有措施得到彻底实施?
-因为许多公司在正常情况下已经采取了一些保护知识产权的措施,但在供应链短缺时期,这些措施可能需要更加严格和全面地执行,以确保在高风险环境下仍然有效。
Outlines
🔒 供应链短缺下的知识产权保护
本段落讨论了在供应链短缺时期,公司如何面临敏感技术被盗的风险。Tyrell Miller,Foley and Lardner LLP的知识产权合伙人和注册专利律师,指出了劳动力短缺和供应链中断导致的对专业工具的需求增加,这为不诚实的竞争对手或公司提供了复制或仿制设备的机会。此外,买家可能因为急需工具而故意忽视真伪,导致对知识产权保护的无视。
🛠 知识产权风险来源及保护措施
Tyrell Miller提到,知识产权的威胁既来自内部员工可能将商业机密带到竞争对手公司,也来自外部第三方,特别是在工具和设备需求增加的情况下。他强调了保护商业机密的重要性,包括与员工、分销商和客户签订保密合同,以及考虑通过专利保护那些无法通过商业机密保护的创新。此外,他还提到了专利保护的地域性,建议在市场可能发展的国家申请专利保护。
🌐 全球供应链中的知识产权挑战
Miller讨论了国际供应链中知识产权保护的挑战,特别是某些国家对外国知识产权保护的不尊重以及在这些国家执行知识产权的难度。他建议公司不仅要保护商业机密,还要通过合同条款防止逆向工程,并考虑通过许可而非直接销售来控制设备使用。最后,他强调了在关键司法管辖区拥有强大专利组合的重要性,以及预测市场发展并相应地申请专利的必要性。
Mindmap
Keywords
💡贸易秘密
💡知识产权
💡供应链短缺
💡专利律师
💡专利保护
💡合同保护
💡逆向工程
💡许可协议
💡地理风险
💡法律执行
💡信息保密
Highlights
保护贸易秘密和知识产权在供应链短缺时期的重要性
Tyrell Miller作为知识产权合作伙伴和注册专利律师,讨论了当前公司在供应链短缺期间面临的技术盗窃风险
劳动力短缺和供应链中断增加了对专业工具的需求,为不法竞争者提供了复制设备的机会
短缺情况加剧了潜在买家可能购买假冒或未经授权设备的可能性
内部员工和第三方可能成为技术盗窃的风险来源
信息或贸易秘密是生产物理设备的关键,而不仅仅是设备本身
专利保护对于公开市场上的设备至关重要,因为它保护了不受贸易秘密保护的有用发明
专利保护是地域性的,只在申请保护的国家有效
在全球化供应链中,某些国家对外国知识产权的尊重程度较低,执行难度大
公司需要确保贸易秘密得到充分保护,包括与分销商或客户的合同中包含反逆向工程条款
考虑通过许可而非直接销售设备,以保持对设备使用的控制
强调了在关键司法管辖区拥有强大专利组合的重要性
建议公司在市场发展或预期发展的国家/地区保护专利
强调了前瞻性思考,预测市场发展方向的重要性
Tyrell Miller提供了关于如何在供应链危机期间保护贸易秘密和知识产权的实用建议
Transcripts
[Music]
protecting trade secrets and
intellectual property in times of supply
chain shortages
my guest is tyrell miller he is an
intellectual property partner counselor
and registered patent attorney with
foley and lardner llp hello terrell
good morning how are you bob good thanks
so much for joining me this is a very
important topic especially we don't talk
much about what some of the
ramifications of supply chain charges
might be with regard to ip protection so
how and why do you believe that
companies today are susceptible to theft
of sensitive technology during this time
of supply chain shortages
yeah it's a great question bob and and
really
there's a lot of different reasons but
the primary ones that we're seeing and
that i think are the most relevant uh
really come from the recent labor
shortages and supply chain disruptions
it's kind of increased the demand we see
a lot with specialized tools in various
industries whether that's the oil field
industry or other types of industries
and when you have a shortage of
specialized tools and specialized
equipment
there's an there's a window there for
i guess mischievous
competitors or companies or even
sometimes your own distributors
to look at the tools that you have and
the equipment that you have that are in
short supply and look to see if there
are ways to
duplicate or replicate that equipment
and get it into the market
and a lot of times that's done with
blatant disregard to
contractual protections and certainly
intellectual property protections
but i'm wondering how the shortage
situation exacerbates that does that
mean that potential buyers are more open
to the possibility of purchasing and
on on
our purchasing
counterfeit or
unauthorized types of equipment
yeah bob i i think you're right and i
think a lot of that is
um they need the tools they need the
equipment and they're willing in a lot
of instances to maybe look the other way
and maybe not even ask the right
questions so kind of a willful ignorance
kind of scenario
where they they may know and maybe by
asking a couple of questions would
otherwise find out that the equipment or
the tools they're looking to purchase is
not authentic
so where is the threat coming from does
it come from within from employees of a
company does it come from third parties
a combination of the both where is the
biggest risk
really it's kind of a
dual risk i'd say really from internally
from employees who may
uh
maybe be transitioning from one company
to another going to a competitor and
maybe taking some trade secret or
proprietary information with them on
projects that they've worked on
but you're also seeing it now as i
mentioned with the with the shortages
and the increased demand for a lot of
these tools where companies especially
in the oil field industry they have to
have that equipment they're losing money
every day they don't have the equipment
and so those instances they're often
looking for not only competitors or
distributors but even just third-party
vendors in the oil field business that
might say
you know what i can make you that tool i
can i can make you a copy of that tool
and i can do it cheaper and a lot of
these businesses are saying
yeah
i need the tool i'm losing money what
can you get me and so again
a lot of times you're just seeing it
where
a lot of willful ignorance or ignoring
the intellectual property protections
that may be in place
because they they need the tool and they
they're willing to
kind of bend the rules a little bit to
get it so the threat here is from the
actual information or the trade secrets
that lead to the production of the
physical equipment right it's not
stealing the actual equipment itself is
stealing the information required to
produce it
that's correct and in a lot of those
instances the information is in the form
of of trade secrets um but oftentimes
when tools and equipment go out there uh
you know for there to be a trade secret
it has to truly be kept a secret and if
you can reverse engineer it or see the
information while you're out there
using the equipment whether that's a
customer or a distributor that's fair
game and so that's where you have to
look to other avenues of ip to protect
it and oftentimes that's going to focus
on patent protection right because
patents are going to protect that useful
invention
that
isn't subject to trade secrets because
you're putting it out into the public
where distributors and customers can see
it and reverse engineer it so patent
protection is important for a lot of
those tools but again patent protection
is only a jurisdictional protection so
it's it's good in the u.s and it's good
in whatever other jurisdictions you
choose to file for protection in and are
able to obtain protection so if you only
have protection in the u.s you're not
protected in canada or mexico or other
places that the copy tools may venture
but on the other hand we're talking
about a situation that is that is
crucial as a matter of course for any
manufacturer and i would think that just
in normal times
any manufacturer would would have taken
steps to protect trade secrets would
have exercised patent protection
wherever possible would be doing all the
things necessary to protect its ip
you're saying so what's the difference
now uh are there additional steps that
need to be taken that weren't taken
before that should have been taken as a
matter of course
i don't necessarily think it's
additional steps i think it's just more
of a focus on
making sure that the steps you're taking
are being thoroughly implemented
and what i mean by that is is if you
have trade secrets you need to make sure
you're protecting them you need to make
sure that your your contracts that you
have with
distributors or customers
have provisions in there that say
they're not going to reverse engineer or
attempt to learn your trade secrets uh
if you're filing for patent protection
because you don't maybe have trade
secret protection maybe it's
the type of knowledge or information
that's already public or will be public
um then you got to look and see if it's
subject to patent protection if it's
subject to patent protection you got to
make sure that you're filing broad
patents and that you're following them
in multiple jurisdictions at least
specifically in the jurisdictions where
there's a market for the equipment
i would assume the situation is worse in
cases where the supply chain is
international or global which maybe
describes just about every supply chain
today are there any particular
geographies parts of the world where
this risk is especially high
certainly i you know there are certain
countries that
um
maybe don't have the respect for foreign
intellectual property that that more
developed countries typically do and
even some developed countries that don't
really
uh look to respect foreign intellectual
property protections
um and in a lot of situations the way
they also get around it is it's very
difficult to enforce
intellectual property in certain foreign
jurisdictions um you know it's i hate to
use the term like home field advantage
but in a lot of these countries where
tools or equipment are being uh
replicated
even if you have patent protection filed
in those jurisdictions it's often very
hard to to really enforce it in a
meaningful way
because those the courts of those
jurisdictions really aren't interested
in hurting their own economy
by having foreign intellectual property
enforced against their businesses
okay so let's just reiterate i want to
make quite clear what you're
recommending that companies be doing now
in this particular time in order to
protect trade secrets intellectual
property just run down from me like some
of the main points that they need to
keep in mind
sure
the first one we'll start with is trade
secrets when you've got information that
is truly proprietary and what i mean by
trade secret is something like the
coca-cola formula where you're not
you know you're not just you're not
giving the information out publicly
right i mean coca-cola puts all the
ingredients on the side of the can but
they don't tell you the secret recipe
and that's what i'm talking about there
with trade secrets if you have something
that is
not able to be reverse engineered or
reverse engineered easily you need to
make sure you are protecting it as a
trade secret internally with your
employees and externally with any
vendors or contractors that may have
access to the information and that's
going to require contractual protections
um you know password protecting files
things like that that you would think
are normal with maintaining information
as a secret
additionally you're going to want to
look at contractual provisions against
reverse engineering
and and
you know sometimes territorial use when
you're maybe selling products
contractual provisions can can
oftentimes help get you rights where
trade secrets aren't going to aren't
going to be able to help you maybe
because the information is public or can
easily be reverse engineered
and you can also think about licensing
out the equipment almost like a rental
or a lease type arrangement instead of
outright selling it because then you're
able to still maintain control of the
equipment and tools rather than just
selling it outright
but then of course intellectual property
protections the one that's the most
important here that i'll stay focused on
is patent protection now patents are not
the easiest thing to acquire and they do
take time to get but as long as you have
a robust
patent portfolio that's covering a
particular piece of equipment or tool
that is truly innovative and subject to
patent protection you should be looking
at
particularly protecting it in the
jurisdictions and countries
where the market's going to be there or
where you think the market's going to
develop and you have to kind of have a
lot of forethought on that because
if it's something that's innovative and
new it probably hasn't been introduced
to the market yet at least not in the
form that you're attempting to patent it
so you have to kind of
you know think forward as to which
jurisdictions you think the market will
develop
so
really those are kind of the key points
you know to reiterate you want to make
sure you're protecting your trade
secrets you want to look over your
contracts and protect not only what your
employees are doing as far as as taking
information to go to a competitor maybe
a trade secret information but also the
contracts with your distributors and
customers to make sure there are
protections against reverse engineering
and you might also consider licensing
out the equipment as opposed to selling
it because then you're able to maintain
your control over how that equipment's
used and where it goes
um and then lastly of course is patent
protection and really if it's something
subject to patents getting it out there
and getting it protected in the
jurisdictions that matter to your
business terrell miller of foley and
lardner thank you for that great advice
as to how companies can protect their
protect their trade secrets and their ip
at a time when they are especially at
risk in this time of supply chain
shortage of crisis thank you so much for
being with me today appreciate it thank
you bob
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