Tech Transfer Central

Trade Secret Protection, Management and Licensing: What TTOs Need To Know

Format: On-Demand Video/Transcript, or DVD
Originally presented: Friday, March 10, 2023
Price: $197
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Trade secrets are a unique form of IP whose value, unlike patents, trademarks, and copyrights, relies upon preventing competitors and others from discovering those secrets. Properly identifying what constitutes a trade secret, understanding its commercial value, and legally protecting it can be considered an important element of your overall IP strategy — or you risk losing that IP altogether. 

Many TTOs have an incomplete understanding of the trade secret aspects of their IP portfolios and may fail to capture the value it can represent either alone or when paired with patent licenses. Of course, the academic right to publish must be factored in as well.

That’s why we’ve partnered with Richard Cahoon, PhD, and attorney Peter Toren for this important 90 minute webinar:

Trade Secret Protection, Management and Licensing

In this expert-led webinar, you’ll learn what’s needed to facilitate the creation, management, and commercialization of trade secrets.  In addition to a brief overview of the law underlying trade secrets, and some important legal concepts, you’ll hear practical advice on ongoing management and licensing issues related to trade secrets. A key topic will focus on how patents and trade secrets can be integrated to protect a new technology and increase its licensing value.

Please join us for a detailed look at how your university can best identify, protect and manage trade secrets to protect your valuable IP. Here’s a quick look at the agenda:

  • What is a trade secret?
  • Understanding the various methods of protection
  • Factors TTOs should consider:
    • When others try to patent your trade secrets
    • University mission and the academic right to publish
  • Licensing and management of trade secrets
    • Challenges in the university environment
    • Exclusivity
    • Scope
    • Cost factors: obtaining a patent vs keeping your secret confidential
    • Enforcement
  • How to integrate trade secrets and patents to protect IP and boost licensing returns

Meet your program leaders:

Richard CahoonRichard S. Cahoon, PhD
BioProperty Strategy Group, Inc.
Department of Global Development, Cornell University

Dr. Richard Cahoon previously held the Director of Technology Transfer position at Cornell University for twenty years.  While at Cornell, Dr. Cahoon was responsible for the IP and technology transfer policies and functions of the university.  He also managed hundreds of technologies and successfully negotiated hundreds of license agreements, research contracts, interinstitutional agreements, and many other contracts for Cornell.

Dr. Cahoon has nearly 40 years of experience in R&D management, partnerships, commercialization, entrepreneurship, IP strategy, licensing, business development, negotiation, and mediation.  He is also an inventor/patentee.  He advises companies, universities, governments, and non-profit organizations on IP, technology transfer, and commercialization policies and practices.

Dr. Cahoon has helped create many new technology companies and has been a board member of several companies and non-profit organizations. He remains a professor at Cornell where he teaches courses in Invention & IP Management, new technology commercialization, and entrepreneurship.

Dr. Cahoon has often served as an expert in IP litigation and has conducted numerous IP/technology valuations. He has been an advisor to the World Bank, the governments of Qatar, Thailand, Philippines, the State of Michigan as well as universities, companies, and NGOs in Turkey, Chile, Japan, Jamaica, Philippines, South Africa, India, Korea, Mexico, Colombia, Brazil, the US, and the European Union. 

Dr. Cahoon is currently the leader of a multi-year project in eight countries for the World Intellectual Property Organization (WIPO) to establish innovation systems in developing countries through university technology transfer. He is currently preparing to launch an online Cornell certificate course on Invention & IP Management.

Peter J. TorenPeter J. Toren
Attorney at Law

Peter is a litigator with over 30 years of experience and has successfully represented clients in a variety of matters in venues all over the United States at trial and appellate levels, with a strong focus on patent, trademark, copyright, and trade secret cases.

He has represented clients in patent litigation involving a variety of technologies including computer software and hardware, light emitting diodes, biotechnology, semiconductor manufacturing and fabrication, optics and medical devices as well as business methods.

Peter was a partner in the New York office of Sidley Austin. Before that, he serves as a federal prosecutor with the Computer Crime and Intellectual Property Section of the Criminal Division of the United States Department of Justice, where he worked for over eight years and served as Acting Deputy Chief.

He has first-chaired several patent and trademark trials and dozens of Markman, preliminary injunction and summary judgment hearings in federal courts throughout the United States.

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