Canadian Lawyer - sample

w w w . C A N A D I A N L a w y e r m a g . c o m M A Y 2 0 1 7 57 hen Facebook was recently ordered to pay a half-billion dollars to ZeniMax Media over a trade secrets violation, the case highlighted the risks inherent in acquiring companies with trade secrets in sectors such as technology and manufactur- ing. And with the ascendancy of digital technology and the increased mobility of employees, it is easier than ever for trade secrets to be taken and used for the development of competing prod- ucts. Intellectual property lawyers caution that employers and companies need to practise more vigilance — and due dili- gence — in protecting their secrets. And a tighter regime governing trade secrets that would bring Canada more in line with jurisdictions such as the United States would also be advantageous. Trade secrets in the new world A trade secret is a property right that differs from a patent in that as soon as the secret is discovered, the discoverer has the full right to use it. The secret may be a plan or process, tool, mecha- nism or compound known only to its owner and certain employees, and it may consist of any formula, pattern, device or compilation of information that is used in one's business and which gives the owner an opportunity to gain an advantage over competitors. Companies from food processors to drug companies have trade secrets, which "are often incremental improve- ments you make" to products, says Noel Courage, a partner at Bereskin & Parr LLP, an IP law firm in Toronto, who says there is an increasing trend toward awareness and enforcement of trade secrets. "Companies are getting more vigilant about this kind of thing. "The fact that laws are lacking [in Canada] compared to the U.S. is anoth- er issue. It's a strange culture. As an employee, you're allowed to take your general skills and knowledge with you, but not trade secrets. A lot of computer guys think they can take what they want." L E G A L R E P O RT \ I N T E L L E C T U A L P R O P E RT Y W HUAN TRAN Protecting trade secrets IP lawyers say Canada lacks proper legal protections for trade secrets, so vigilance is key By Elizabeth Raymer AS AN EMPLOYEE, YOU'RE ALLOWED TO TAKE YOUR GENERAL SKILLS AND KNOWLEDGE WITH YOU, BUT NOT TRADE SECRETS. A LOT OF COMPUTER GUYS THINK THEY CAN TAKE WHAT THEY WANT. NOEL COURAGE, Bereskin & Parr LLP

• Cover