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Craig Petronella, CMMC RP, IT Cybersecurity and Compliance SME interviews Intellectual Property (IP) Expert Attorney Daniel Shulman

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Recorded December 2020. Regulations, deadlines, requirements and products discussed in this episode reflect that date and may have changed since. For where things stand today, see our current compliance guidance or ask us.

The episode in brief

What this episode covers

In this episode of Encrypted Ambition, Craig Petronella of Petronella Technology Group interviews intellectual property attorney Daniel Shulman, who introduces his Chicago-founded law firm, its practice groups, and his years as in-house IP counsel for a consumer packaged goods company. Shulman explains that intellectual property is the legal means by which a business makes what makes it different exclusive to it, comparing it to building a fence around what a business does.

He walks through patents, trademarks, and trade secrets, arguing that trade secrets are among the most valuable and most overlooked assets. The conversation covers protecting trade secrets through need-to-know access, secure storage, and non-disclosure agreements, which Petronella connects to his layered cybersecurity work in regulated spaces, and Shulman shares a step-by-step approach to identifying intellectual property: documenting new methods going forward, rewarding trade secret disclosures as well as patents, and attacking the past with a plain-English questionnaire sent to stakeholders. He also distinguishes trade secret enforcement from patent infringement, explains how copyright protects expression rather than functionality, and discusses joint development agreements and licensing negotiations between suppliers and customers.

Worth remembering

Key takeaways

  1. Identify what makes your business different from competitors, because Shulman describes intellectual property as the legal means of making those differences exclusive to you.
    “intellectual property is the legal means by which you make what makes you different exclusive to you”
  2. Shulman advises limiting trade secret access to a need-to-know basis, securing where information is stored, and sharing only what each function needs.
    “One is, you have to limit access. It's got to be on a need to know basis, and probably very few people need to know.”
  3. Have employees sign NDAs because, Shulman explains, a court may find trade secrets inadequately protected if even the easiest step was skipped.
    “But if you don't have an NDA, a court's going to say you didn't adequately protect your trade secrets because you didn't even do the easiest thing possible.”
  4. Shulman advises starting from the present and documenting each new or better way of doing something as it is discovered, then securing that documentation.
    “You start with the present. Going forward, starting today, when you discover a new or better way of doing something, you document it.”
  5. Shulman recommends sending a two to three page plain-English questionnaire to people with different touchpoints to uncover existing intellectual property.
    “And it just asks questions like, What do you do that's different that gives you value?”
  6. Because competitors can lawfully reverse engineer a trade secret, Shulman advises continuing to innovate to maintain the head start it provides.
    “If somebody reversed engineers, a trade secret, you can't do anything to stop them. That's the downside of a trade secret.”
  7. Shulman says copyright protects expression rather than functionality and, at the time of recording, lasts roughly the life of the author plus 70 years.
    “So your code is both copyrighted and trade secret. The copyright lasts roughly the life of the author plus 70 years.”

The summary and takeaways were drafted with AI from the transcript below. Each takeaway is shown with the passage it comes from.

From the show notes

About this episode

Craig Petronella , CMMC RP, IT Cybersecurity and Compliance SME and founder of Petronella Cybersecurity and Digital Forensics interviews Intellectual Property (IP) Expert Attorney Daniel Shulman of Vedder Price on the various forms of intellectual property (IP) that may be lurking in your business unprotected. You and your business are unique. You may have a certain methodology on how you perform your work for your clients or you may have a unique product offering. Learn how to identify IP and how to properly protect so that it adds value to your business.

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