What keeps IP counsel up at night? Protecting trade secrets -- specifically in China -- a group of in-house IP lawyers told an audience at the Moscone Center this morning during the ABA's annual conference in SF.
Like all in-house lawyers these days, IP attorneys are being forced to do more with less in these tough economic times. They must carefully weighing the costs and benefits of various strategies when pursuing or defending against litigation, from where to file, to when.
But they also have many concerns unique to the IP world. Dealing with patent trolls is always a hot-button, ongoing issue, and it isn’t getting any easier. For example, Susan McGahan, an IP attorney at AT&T Inc., says non-practicing entities are becoming increasingly sophisticated about the counsel they hire to pursue their claims.
And they talked in-depth about how they deal with their biggest and most important concern -- protecting their companies’ trade secrets. It’s a growing challenge, they said, whether it’s during litigation or when doing business overseas. Gary Loeb, vice president of intellectual property at Genenetech, Inc., said that during litigation he fights aggressively to keep his company’s secret information confidential. “It’s a battle we take very seriously,” he said. “It’s something that makes our cases very expensive.”
Scott Piering, senior IP lawyer at Cargill, Incorporated, said he often seeks to try cases before the International Trade Commission instead of in U.S. federal court because information can be sealed more easily. “The ITC is a great venue for us,” he said.
Cargill has had less success keeping their trade secrets secret when doing business in China. Dealing with corporate espionage is just the price of doing business there, he said. So his company doesn’t take its best trade secrets to China, but Cargill has taken some calculated risks in the country, and said it’s expected that trade secrets will be stolen. “It keeps me up at night constantly,” he said.
Robert Lindefjeld, general counsel and chief IP counsel for Nantero, Inc., said he hasn’t figured out how to deal with corporate spying in China either. His strategy is to just maintain a strong patent portfolio in China. “I used to file every single patent overseas,” he said. “Now I only file key patents because it’s so expensive.”