Bird & Bird & OXYGY’s Trade Secrets Solution - Phase 2

Managing Trade Secrets is challenging, especially given the lack of clear metrics that can serve to track progress in relation to the management exercise.  This is unsurprising as Trade Secrets are not protected by familiar registration mechanisms, such as those used for patents, trademarks, or designs. They are also often emergent properties, such as a technology company's data management methodology, or cannot be adequately protected via conventional IP rights, such as a restaurant chain's recipe for its secret sauce. As a result, our clients are often unsure about how to manage and protect these intangible assets?

Edoardo Monopoli
Edoardo Monopoli
Since 1995, I have partnered with senior executives on their personal, leadership team and business strategies for sustainable success, combining performance improvement with real people engagement.
5 minutes
10 June, 2021

Bird & Bird & OXYGY’s Trade Secrets Solution – Phase 2

Managing Trade Secrets is challenging, especially given the lack of clear metrics that can serve to track progress in relation to the management exercise.  This is unsurprising as Trade Secrets are not protected by familiar registration mechanisms, such as those used for patents, trademarks, or designs. They are also often emergent properties, such as a technology company’s data management methodology, or cannot be adequately protected via conventional IP rights, such as a restaurant chain’s recipe for its secret sauce. As a result, our clients are often unsure about how to manage and protect these intangible assets?

We divide our Trade Secrets engagements into four phases, with the first three phases presented as an integrated Bird & Bird and OXYGY offering, powered with technical solutions, such as HAZEL and our Smart Survey tool.

We have already covered Phase 1 (Link) of our multi-phased approach to managing Trade Secrets. In this article, we will cover Phase 2, Improve and Protect.

Phase 1 ends with an assessment and presentation of the legal, IT security, process and organisational risks associated with a business’s Trade Secrets. This risk assessment will determine the priority areas for the client, OXYGY consultants and Bird & Bird lawyers, so a roadmap for remediation can be generated.

The objective of Phase 2 will be to take the client on a journey to becoming robust from compliance, organisational and IT security perspectives. By the end of Phase 2, the client should be able to account for and protect their Trade Secrets with legal documentation and a set of policies & procedures that permit the exploitation of said Trade Secrets with minimum risk-impact. Equally, the client can seek to gear their organisational structures, business processes and skills/competencies towards leveraging and protecting their Trade Secrets to their full potential.

In Phase 2, Bird & Bird and OXYGY will work in tandem to cover the legal, process, organisational and IT security facets of Trade Secrets management.

Bird & Bird will leverage its market-leading expertise and industry knowledge to concentrate on preparing bespoke policies for the use of Trade Secrets generating functions. They will also help define legal recommendations in relation to the specific risks detected in the Risk Assessment from Phase 1.

OXYGY will take on the tasks traditionally associated with change management consulting. From the risks identified in the Risk Assessment, our consultants will be defining a series of organisational recommendations. We will then design a Trade Secrets framework and change management plan aimed at successfully deploying the recommendations. Following the collaborative approach that defines our consulting-niche, we will be working with the client to design new or modify current governance structures, processes, procedures, skills, information flows and IT security policies in line with the Trade Secrets roadmap agreed between the three parties (client, consultant and lawyer).

Our in-house IT security resources will be committed to using the IT security audit in Phase 1 to determine the best set of cyber policies and a clear roadmap to develop a higher level of cybersecurity for the newly identified Trade Secrets. IT security will have mapped the locations Trade Secrets within the IT environment up against known threat vectors internally (insider threats) and externally (threat actors). Understanding the information topography of the business (e.g., how access is controlled), the organisation’s cyber policies will be reviewed in line with relevant industry and regulatory standards. Phase 2 will end with an in-depth cyber improvement roadmap that will address the gaps identified in Phase 1.

Rather than presenting a series of legal and consulting recommendations that make sense only within the confines of the project itself, OXYGY and Bird & Bird may choose to use a Trade Secrets management tool, HAZEL, which will help clarify the client’s Trade Secrets protection-status and track progress.

HAZEL Trade Secrets management dashboard

 

Montage of the HAZEL reporting feature

Protection mechanisms panel

HAZEL is an easy-to-use Trade Secrets management tool which has three primary functionalities.

It serves as a secure repository for a company’s Trade Secrets meta-data, including meta-data related to the protection mechanisms (legal or otherwise) of said Trade Secrets.

With the tool, the client can upload and link relevant documents, InfoSec policies, and details of other protection mechanisms.

HAZEL also contains a high-level dashboard showcasing meta-data such as % coverage of protection-mechanisms, which serve to track project progress and hold stakeholders accountable for managing Trade Secrets.

OXYGY and Bird & Bird can use HAZEL to record and link-up their work, and we will also work with the client to enable a suitable in-house team to become proficient in its use. Utilising a robust platform such as HAZEL will provide the evidence required by insurance companies or external auditors to demonstrate that a business’s Trade Secrets are being properly managed and protected.

Phase 2 will be complete when Bird & Bird and OXYGY have defined with the client a coherent set of recommendations and a roadmap for protecting Trade Secrets.

Our next article will run through the third Phase which concerns how Bird & Bird and OXYGY ensure the sustained and scalable management and monitoring of Trade Secrets in order that the client maintains an operating model that can stand the test of a constantly evolving Trade Secrets landscape.

 

About the Authors

Edoardo Monopoli – CEO, OXYGY
Since 1995, I have partnered with senior executives on their personal, leadership team and business strategies for sustainable success, combining performance improvement with real people engagement.

Rob Williams – Partner, Bird & Bird LLP
I am a partner and co-head of our Intellectual Property Group in Bird & Bird LLP in London where I use my deep-level experience of complex IP strategy and disputes to advise clients from a range of IP-rich industries

Yuji Develle – Consultant, OXYGY
My strengths lie in collaborating with stakeholders in complex business ecosystems and in creatively designing new solutions to difficult problems. I am passionate about exploring the tender interaction between technology and business models.

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