The client is a fast-growing SME launching a new, disruptive version of a common, 100-year-old product. The client expects the incumbents to challenge the client’s IP and hinder their progress when their product version hits the market.  

The new version of the product builds on patents the client has for a more cost-efficient process. However, the old process used by the incumbents can be improved and there is no reason for the incumbent competitors not to improve their own process once the client’s own process is revealed.  Thus, the client’s success is dependent on their rapid expansion, and gaining a solid market share while they have the advantage of a much lower price point and higher quality product than the incumbent competitors. 

The CEO scheduled a meeting with several possible users interested in the product.  In the lead up to the meeting (in fact, just hours before) the CEO realised that the information she intended to disclose to peak the participants’ interest, combined with the impending publication* of a patent application, could be used to disclose a crucial part of the company’s cost-efficient process.  

The CEO called Dehns for urgent advice on how to handle the disclosure of information during the meeting. Dehns attorneys were able to advise her on how to define this crucial information as a trade secret. The trade secret was recorded in Dehns’ system, and a slide was added to the presentation making it clear what information constituted the trade secret, and that the NDA signed by the participants in the meeting was applicable.   

Upon further review of the content of the patent application, Dehns attorneys also advised that the presentation content could be modified to only contain information from the soon to be published patent application. The additional information intended to impress the meeting participants could be presented verbally, without disclosing all the details or adding any details to the presentation slides, further protecting the particulars of the client’s process. 

Once the meeting had taken place, Dehns advised the client to create and implement a “revealing strategy.” This strategy would include a timeline for when the trade secrets are likely to end, and when to actively present information – such as publicly taking credit for an invention when it is anticipated that competitors are about to launch a similar product.  

The creation of a revealing strategy also highlights when the company should inform the meeting participants that signed the NDA when their confidentiality obligations would come to an end. When a trade secret is defined, confidentiality obligations may exceed the general end of an NDA. As demonstrated in this case study, information management is always necessary when sharing a trade secret.  

Dehns’ initial response to the request for urgent disclosure advice then evolved into advising and preparing a comprehensive revealing strategy, encompassing technology development as well as marketing communication.  

*the patent application was due to be published as 18 months had passed since the patent had been filed.

Due to confidentiality, this case study has been compiled from real, anonymised cases.