Trade secret protection for small company?

[P4cN63]

What is the name of your state? North Carolina

Hi,

I have a small startup LLC in North Carolina with a trade secret it wishes to protect. So far, the trade secret is undisclosed to others. The company has no other employees other than myself.

I have accepted a job offer with a large company and they have a confidentiality agreement similar to this one:

http://www.cs.washington.edu/commercialization/ott/ibm.pdf

I plan to do work for my small company during my free time and perhaps earn a little on the side to save for retirement or catastrophic illness.

The small company was formed prior to any discussion with recruiters, etc. about the job in the big company, and the trade secret was developed prior to my accepting the job offer and therefore prior to my knowledge of any of the big company's trade secrets.

The big company does not know or really care about my small company because it is irrelevant at this point. Also, the place I'll be working at is in a different state than the Articles of Organization of the small company (North Carolina). However, I plan to do work for the small company while still in the other state.

I am concerned about the following scenario: The big company discovers by some means that the small company uses the same trade secret as one of their processes. They accuse the small company of misappropriation and fire me, try to get an injunction and damages.

However, the small company developed the trade secret without knowledge of the existence of the other big company's trade secret. (Either that, or the small company developed the trade secret before someone else developed the trade secret in the big company. The scenario is hypothetical.)

What do you recommend I do to avoid a career mess and legal entanglement while still protecting the LLC's trade secret, if anything?


Thanks for the reply,

P4cN63What is the name of your state?

 

[seniorjudge]

What is the name of your state? North Carolina

Hi,

I have a small startup LLC in North Carolina with a trade secret it wishes to protect. So far, the trade secret is undisclosed to others. The company has no other employees other than myself.

I have accepted a job offer with a large company and they have a confidentiality agreement similar to this one:

http://www.cs.washington.edu/commercialization/ott/ibm.pdf

I plan to do work for my small company during my free time and perhaps earn a little on the side to save for retirement or catastrophic illness.

The small company was formed prior to any discussion with recruiters, etc. about the job in the big company, and the trade secret was developed prior to my accepting the job offer and therefore prior to my knowledge of any of the big company's trade secrets.

The big company does not know or really care about my small company because it is irrelevant at this point. Also, the place I'll be working at is in a different state than the Articles of Organization of the small company (North Carolina). However, I plan to do work for the small company while still in the other state.

I am concerned about the following scenario: The big company discovers by some means that the small company uses the same trade secret as one of their processes. They accuse the small company of misappropriation and fire me, try to get an injunction and damages.

However, the small company developed the trade secret without knowledge of the existence of the other big company's trade secret. (Either that, or the small company developed the trade secret before someone else developed the trade secret in the big company. The scenario is hypothetical.)

What do you recommend I do to avoid a career mess and legal entanglement while still protecting the LLC's trade secret, if anything?


Thanks for the reply,

P4cN63What is the name of your state?

Patent the process. (I am NOT an intellectual property attorney; stand by for other opinions or go hire an IP attorney.)

 

[divgradcurl]

As SJ mentioned, if the "trade secret" is otherwise patentable, filing a provisional or nonprovisional patent application prior to begining work at the new company would help protect your intellectual property.

If the IP is not patentable, or you don't care to patent it, then there isn't a lot you can do. You could disclose the secret to your new employer, and get something in writing acknowledging that they knew you came up with it before starting work, and then get an NDA signed to protect the secret, but good luck with that.

Is this company you are going to work for in the same general line of business or technology? Will your own business compete with your employer? Will your own business be a potential customer of your employer?