Part VI – Protecting Confidential Information & Trade Secrets - Suggestions to Improve Prospects of Success

1. Ensure that the employer owns the intellectual property rights.
2. Updating employees’ contracts to include restrictive covenants is a delicate process. The process must be conducted fairly amongst other things. The appropriate time to seek to incorporate such provisions into employees’ contracts may be when they receive promotions that will involve them in dealing with information with a higher degree of sensitivity. Consultants’ contracts in most cases should not present the same difficulties.
3. Carefully consider the scope of employees’ duties and responsibilities and the business with whom they interface when building commercial relationships with suppliers and customers.
4. Consider incorporating provisions for garden leave at the end of the engagement.
5. If the employee or consultant is exposed regularly to highly sensitive information, or has the opportunity to store it electronically off-site, it may be appropriate to incorporate provisions requiring consultants and employees to verify on oath that they have complied with the requirements of their contracts of engagement to return company equipment and destroy all copies of information on demand.
6. Restrictive covenants may be agreed with both the employee or consultant and the supplier or customer, creating two avenues of enforcement of the restrictions.
7. Where restrictive covenants are agreed with customers and suppliers, incorporate a minimum threshold of pay to which the restrictive covenants will apply. The risks to a business are not the same for a mail clerk leaving the business it may be for a member involved in research and development or financial transactions.
8. Warn employees of the highly sensitive nature of the information prior to it being received.
9. Consider incorporating optional provisions for garden leave in contracts for particularly privileged employees.
10. PDF documents, Word and Excel documents may be electronically marked, databases may be seeded and emails may be tracked electronically to elicit evidence of unlawful disclosures. Thus systems must be in place to cater for the event.

Gillhams Solicitors are intellectual property lawyers advising businesses on commercial technology contracts, employment contracts, and intellectual property disputes, including those involving copyright, patent law, confidential information and trade secrets.