Protecting Trade Secrets in a Collaboration: A Case Study
This program will provide valuable insight on how best to protect trade secrets during a collaboration, joint development project, or other partnership. The program will highlight best practices for exchanging information during a collaboration, and will include a discussion of pitfalls to avoid in drafting collaboration agreements, in particular:
- Confidentiality / non-disclosure obligations and exceptions
- IP ownership, inventorship, and improvements clauses
- Scope of license and permitted uses of licensed technology
The program will draw lessons from the case of Tekmira Pharmaceuticals Corp., which learned the hard way about protecting its trade secrets in a collaboration. Tekmira’s former collaborator Alnylam Pharmaceuticals Inc. is considered one of the leaders in small-interfering RNA technologies—which seek to silence disease-related genes—while Tekmira is a leading developer of lipid nanoparticle delivery technologies that are thought to help get the siRNA payloads where they need to go in cells. The two companies entered into collaboration agreements in 2008.
The collaboration ended badly, with Tekmira suing Alnylam in 2011 for trade secret theft and breach of contract. Tekmira alleged that Alnylam abused its status as a collaborator by seeking to exploit Tekmira’s technology for its own benefit, without Tekmira’s knowledge or consent. Tekmira claimed that Alnylam applied for patents in its own name on Tekmira’s delivery technology, passed off Tekmira’s technology as Alnylam’s own “next generation” competing technology, and sold Tekmira’s manufacturing secrets to a third party in Asia without Tekmira’s permission. Alnylam sought to defend itself by saying its conduct was authorized by the parties’ collaboration agreements. The litigation settled in November 2012, two days before trial, with Alnylam agreeing to pay Tekmira $75 million in cash and near-term milestone payments and agreeing to transfer 150 patents and patent applications to Tekmira.
This program, featuring Tekmira’s counsel from Orrick, Herrington & Sutcliffe LLP, examines the Tekmira/Alnylam dispute as a case study on how best to protect trade secrets during a collaboration.
Elizabeth A. Howard, Partner, Intellectual Property, and Michael C. Spillner, Partner, Intellectual Property,
Orrick, Herrington & Sutcliffe LLP
- The collaboration conundrum
- The Tekmira case: a cautionary tale
- Best practices for drafting specific provisions
- confidentiality clauses
- IP clauses
- license and sublicense rights
Elizabeth Howard is an intellectual property partner in Orrick’s Silicon Valley office. She co-chairs Orrick’s life sciences practice and focuses on patent infringement and trade secret disputes in the pharmaceutical industry. She was recently named as one of California’s Top Intellectual Property Litigators for 2013 by the San Francisco Daily Journal. Before law school, Dr. Howard was an NSF Plant Molecular Biology Postdoctoral Fellow at the CSIRO Division of Plant Industry in Canberra, Australia, and a Research Geneticist at the University of California, Berkeley. She earned her J.D. at the UC Hastings College of the Law, her Ph.D. in Molecular Biology at UC Berkeley, and her undergraduate degree at UC Santa Barbara.
Elizabeth Howard is an intellectual property partner in Orrick’s Silicon Valley office. She co-chairs Orrick’s life sciences practice and focuses …
Mike Spillner is a partner in Orrick’s intellectual property litigation group, and is based in Orrick’s Silicon Valley office. He focuses on high-stakes trade secret misappropriation and patent infringement disputes, and has particular expertise in cases involving theft of confidential information by ex-employees, business partners, and competitors. He was a primary drafter of the first official model jury instructions for trade secret misappropriation cases for use in the state of California. He is an author and contributing editor of the California State Bar’s treatise on trade secret misappropriation, and was named by Super Lawyers as a “Northern California Rising Star.” He earned his J.D. at Stanford Law School, and his undergraduate degree at UCLA.
Mike Spillner is a partner in Orrick’s intellectual property litigation group, and is based in Orrick’s Silicon Valley office. He …
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Method of Presentation:
NASBA Field of Study:
Business Law-1.00 credit hour
NY Category of CLE Credit:
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About Orrick, Herrington & Sutcliffe LLP
Orrick is a global law firm with a particular focus on serving companies in the technology, energy and financial sectors. Founded in San Francisco and celebrating its 150th anniversary in 2013, Orrick is recognized by Law360 as one of the “Global 20” leading firms. The firm offers clients a distinctive combination of local insight and consistent global quality across 25 offices. Orrick’s lawyers are known for delivering commercially oriented advice on sophisticated transactions and have an extraordinary record of wins in high-stakes disputes. Chambers Global cites Orrick for leadership across 39 practice areas and recognizes 86 Orrick lawyers worldwide as leading practitioners. Selected by Financial Times among the top-five most innovative U.S. law firms, Orrick was the only one of the five firms cited for innovation in both legal advice and the business of law. Collaboration — one of the firm’s core values — defines the firm’s relationships with its clients, among its lawyers and staff, and with its communities.