Intellectual Property Management

Trade Secret Management

J.S. Held’s Inaugural Global Risk Report Examines Potential Business Risks & Opportunities in 2024

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Ocean Tomo, a part of J.S. Held, provides trade secret management services that allow clients to realize and leverage the value of their trade secrets as business assets.

Visit Ocean Tomo for more information about J.S. Held's intellectual property services.

Our team helps clients to develop their intellectual property (IP) and trade secret portfolios and supports the maintenance and security of trade secrets. We deliver expertise in the accurate determination of damages related to trade secret misappropriation and have extensive experience as expert witnesses in IP disputes. Our experts help to mitigate risk and maximize return for clients by offering guidance in IP-driven mergers and acquisitions, valuation, and licensing of trade secrets.

Our Professionals
  • Accredited Business Valuation Experts
  • Certified Licensing Professionals
  • Certified Public Accountants
  • Economists
  • Intellectual Property Valuation Experts
  • Testifying Experts
Our Clients
  • Bankruptcy & Restructuring Attorneys
  • Boards of Directors
  • C-Suite Executives (CEO, CIPO, CTO)
  • Fortune 1000 Companies
  • General Counsel
  • IP Litigators
  • Laboratories
  • Licensing Managers
  • Small & Middle Market Companies
  • Public Companies
  • Start-Ups
  • University Technology Managers
  • Venture Capitalists
Expert Testimony

All IP disputes, particularly those involving trade secrets, include complex economic issues that must be clearly communicated to judges and juries. Our professionals have extensive experience as expert witnesses in such matters, and that expertise synergistically benefits from our non-litigation advisory business. Our experts understand that trade secret remedies and their method of calculation can differ from other forms of IP and that the state-of-the-art in this regard continues to evolve based on case law which is often unique to a given State. Examples of such differences can include:

  • Calculations of actual loss and unjust enrichment
  • The appropriateness of incremental versus fully allocated cost determinations
  • A reasonable royalty measure of damages based on, e.g., modified Georgia-Pacific factors

We have been at the forefront of advancing the most accurate and complete trade secret damages determinations based on peer reviewed methods, either from known academics and professionals or of our own development. Ocean Tomo’s track record includes some of the largest trade secret damages awards and the nation’s most sophisticated trade secret owners.

Strategy

Our IP strategy consulting service is built upon our experience spanning nearly two decades across a comprehensive set of IP driven opportunities. Whether addressing a unique event or IP asset, or ongoing management of a company’s entire IP portfolio, we begin with an understanding of management’s overall concerns and objectives.

Our strategy services, as directed to trade secrets, are focused on:

  • Portfolio development – using a genus to species approach, we work with clients to identify and inventory their trade secrets, including related core technology and information, as well as next best options, to account for and compile the source and corresponding research and development data required to both protect and transact these IP assets.
  • Maintenance – alongside best-of-breed third-party service providers, we advise clients on obtaining escrow/back-up services to ensure that their trade secrets are properly secured, stored, and cannot be lost through a single act of theft, hacking, or natural disaster.
Investments

IP-driven investment banking transactions are a frequent subject of news headlines. Key to such mergers and acquisitions is a thorough understanding of the trade secrets being acquired and the measures to protect them. Our professionals work with transaction principals as well as their counsel and bankers to identify and assure protection of such IP assets.

Risk Management

Our team applies our expertise in understanding and valuing IP assets to minimize the possibility and impact of adverse events. Specific to trade secrets, Ocean Tomo and its partners offer risk management solutions addressing security, compliance, and documentation of prior use.

Trade secrets are often licensed, either on a stand-alone basis or as part of a patent or broader IP license. In any such case, the trade secret licensor should consider periodic audits of licensee compliance with applicable obligations relating to, for example, royalties, maintaining secrecy, and accounting for new or improved developments. Given our holistic trade secret products and services as well as our substantial auditing experience, we are uniquely suited to conduct compliance audits for trade secret owners. We also provide consulting advice when clients are being audited by third parties.

Transactions

Ocean Tomo professionals have significant experience in valuing IP assets. Our trade secret appraisals account for unique value-related aspects of trade secrets, including investments in research and development, life cycle benefits and obsolescence, discount rates, and corresponding cash flows.

Trade secrets tend to build value when one or more of the following characteristics exist:

  • Specific revenue generation – trade secrets may provide a barrier to entry, a head start or both, each of which enables the trade secret owner to extract premium profits through commercial sales of products and/or services.
  • Cost savings – as opposed to a top line revenue benefit, trade secrets may provide operating cost savings that increase operating margins.
  • Risk reduction – proprietary know-how maintained as trade secrets often can reduce the risk associated with future cash values, thereby directly increasing net present value of a business or product.
  • Time acceleration – utilization of trade secrets may generate cash flows faster than if the owner had to use alternative technology or information.

Trade secrets can be an integral component to a company’s operations and viability. Trade secrets are also increasingly becoming an alternative source of revenue and value recognition through license or a host of other transaction types. Our team has significant experience and unique expertise relating to the financial and other business terms of such transactions. In connection with any opportunity to leverage a firm’s proprietary know-how or trade secrets, our experience and expertise will help to further the benefits that an owner will realize.

 
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