AIPLA Trade Secret Summit

The American Intellectual Property Law Association (AIPLA) will host its annual Trade Secret Law Summit at the American Express Company in New York City’s Financial District on March 21-22, 2019.

Seyfarth is a proud sponsor of the Summit, at which partners Erik Weibust (Vice Chair of AIPLA’s Trade Secret Law Committee) will be speaking on Protection of Trade Secrets in the Social Media Era,  and moderating a panel on Trade Secrets and Restrictive Covenants in the Financial Services Industry, on which Scott Humphrey will be speaking.  Other Seyfarth attendees will include James Yu, Jeremy Cohen, and Dawn Mertineit.

We hope you can join us there.  For more information and to register, please click here.

aiplaSeyfarth attorneys Erik Weibust and Eric Barton will be presenting on trade secret and noncompete legislative updates at the American Intellectual Property Law Association’s 2017 Trade Secret Summit, being held on March 2-3, 2017 at Emory University in Atlanta, Georgia.  The theme of the Summit is “Emerging Standards During Tumultuous Times,” and it will include panels of leading practitioners and members of the judiciary and law enforcement on topics ranging from the Defend Trade Secrets Act to cybersecurity, to competitive intelligence, as well as roundtable discussions and networking opportunities.  CLE credits will be available. We will post the full program once it is complete, but in the meantime, more information and registration information is available here.

On December 4th and 5th, nearly 100 trade secret, non-compete, and economic espionage practitioners convened at the Intel Global Headquarters in Santa Clara, California for the annual American Intellectual Property Law Association Trade Secret Law Summit.  Two Seyfarth attorneys, Erik Weibust and Daniel Hart, presented a paper co-authored with Andrew Masak and Robyn Marsh, titled “Lawyer Mobility and Trade Secrets Protection: Restrictive Covenant, Confidentiality, and Non-Disclosure Considerations in the Legal Profession.”  Specifically, the Seyfarth attorneys, sought to address the question of “what can law firms and companies do to protect themselves – like any other industry – from attorneys who leave to join a competitor?  From their paper and presentation,

Attorneys leaving their law firms or companies for other opportunities is nothing new.  And, certainly, changing from one employer to another is not unique to the legal industry.  As in many other industries, employees switching jobs among competitors can raise serious concerns about the misappropriation of trade secrets and confidential information, and client poaching.  Yet, unlike most other industries, restrictive covenants limiting attorneys from competing with their former firms or companies, or taking clients with them, are generally unenforceable.  In fact, most successful firm lawyers are recruited to other firms for the very reason that they have “portable” business.

This does not, however, mean that attorneys have free range to take and utilize confidential information and trade secrets about their prior firms or clients who choose not to go with them.  Quite to the contrary, there are ethical rules barring such behavior.  Nevertheless, the inability of companies and law firms to impose restrictive covenants on lawyers employed by the companies and firms poses practical challenges.  Indeed, in-house counsel, who often act as much as business advisors as they do legal counsel, may be privy to the most sensitive business information of a corporation when they leave to join a competitor, yet they, too, are generally immune from restrictive covenants that restrict their ability to practice law, even for a competitor. 

In addition to the Seyfarth team presenting their ethics in non-competes presentation, the conference included two days of presentations and debates, including:

  • An FBI Briefing on Economic Espionage, “Honey Potting,” and When to Include the FBI in Your Company’s Litigation
  • Emerging Best Practices for Protecting Trade Secrets in Employment and Business-to-Business Relationships;
  • A Judicial Panel Providing Insights from the Bench on Trade Secret and Non-Compete Disputes;
  • Debates on the Future of Non-Competes and Pending Federal Legislation;
  • Pros and Cons of Trade Secrets vs. Patents; and
  • The Latest on Developing Cybersecurity Standards.

The AIPLA Trade Secret Summit is an annual conference designed for both in-house and outside counsel. 

At some point in his or her legal education, every law student discovers one of the more strikingly unique rules about the profession that he or she aspires to enter.  Unlike laws governing physicians, accountants, engineers, and virtually all other professions, rules governing the practice of law impose a nearly absolute prohibition on lawyer non-compete agreements.  At the same time, the law imposes on lawyers nearly ironclad obligations of confidentiality that generally do not apply to other types of professionals and business people.

Despite — or, perhaps, because of — these unique rules, protection of trade secrets in the legal profession poses unique challenges for both law firms and companies.  In fact, during the past year, several cases delving into these topics have generated considerable buzz in the legal community, from Schlumberger Ltd.’s suit against its former deputy general counsel for alleged trade secrets theft to a widely publicized lawsuit by Elliott Greenleaf & Siedzikowski against a former partner for alleged hacking of computer files.

The irony, of course, is that attorneys are hired every day to enforce or seek to block enforcement of non-compete agreements and other post-employment restrictive covenants, yet they are not subject to such agreements themselves.  Indeed, while no universal black letter law defines what lawyers can and cannot do in this regard, courts and bar associations facing this issue generally apply a balancing test to ensure that a lawyer’s conduct comports with the rules of professional conduct, that client interests are protected, and that there is promotion of fair and open opportunities for lawyer competition.  These considerations apply whether the putative restriction applies to in-house or outside counsel.  Nevertheless, the overwhelming weight of authority appears to be that attorneys—in-house or outside counsel—are not subject to post-employment restrictive covenants other than under the most exceptional circumstances.

On December 4, 2014, Seyfarth Shaw attorneys will discuss these timely issues at the American Intellectual Property Law (“AIPLA”) 2014 Trade Secret Law Summit in Santa Clara, California.  At  the summit, Erik Weibust (Boston) and Dan Hart (Atlanta) will present “Lawyer Mobility and Trade Secrets Protection:  Restrictive Covenant, Confidentiality, and Non-Disclosure Considerations in the Legal Profession,” a paper they co-authored with Seyfarth associates Robyn Marsh (Chicago) and Andrew Masak (Atlanta).  Among other topics, the presentation will discuss:

  • ABA Model Rules of Professional Conduct 1.6 and 5.6 and their impact on lawyer mobility,
  • Recent cases and ethical decisions (including ethics opinions from the State Bars of New York, New Jersey, Illinois, Washington, and other jurisdictions) on lawyer restrictive covenants,
  • Application of ethical rules on lawyer non-competes in the in-house context, and
  • Practical considerations for protecting trade secrets and enforcing restrictive covenants in the legal profession.

Registration and additional information about the event can be found here.