Protecting Trade Secrets in a Collaboration: A Case Study

Overview:

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.

Agenda: