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Trade Secrets

Intellectual Property

Trade secret information is a valuable asset for any business. As a complement and added security to patent protection, trade secrets offer a safeguard against willful or inadvertent disclosures and against the potential wrongful disclosure by various threats including departing employees, agents, and subcontractors.

Walter Haverfield works closely with our clients to help determine the vital elements from any asset, technology, idea, process, or invention classified as trade secrets. We assist clients in developing policies and protections to protect their trade secret information, in addition to addressing and auditing a business’s trade secrets to provide insight into whether the business is effectively managing its trade secret portfolio.

Our clients feel confident with our deep bench strength of firm-wide talent and demonstrated knowledge of trade secret law — no matter how challenging or complex the work may seem. We don’t just solve problems, we innovate to prevent problems from occurring, monitor changes in the law to protect your business, and help you plan for the future.

Practice Group Leader

James J. (Jamie) Pingor, Partner

Jamie focuses his practice on domestic and foreign patent preparation, prosecution, procurement, litigation, as well as trademark analysis, clearance procurement, cancellations, oppositions, and litigation matters.

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Our Trade Secrets Insight

A well-kept trade secret could theoretically last forever, but trade secret assets are rarely protected by patents and copyrights. Walter Haverfield’s well-versed IP attorneys serve a comprehensive scope of clients with trade secret law needs, from independent entrepreneurs and startups to Fortune-rated corporations, universities, and other research-based institutions. Our client’s trade secrets can include customer lists, manufacturing methods, financial plans, formulas and formulations, software programs, and business plans.

Our services involve a comprehensive approach to protecting trade secrets, including:

  • Categorizing trade secret information that can be protected
  • Evaluating and determining the value of a client’s trade secrets
  • Conducting audits of trade secret assets and/or investigations of any trade secret misappropriation
  • Litigating trade secret misappropriation
  • Preparing tailored non-disclosure and ownership agreements for employers to utilize with employees and other third parties
  • Preparing procedures for protecting trade secrets, which could include training sessions for employees, instituting new security measures to prevent wrongful disclosure or misappropriation, or creating a best practices hiring list for employers
  • Drafting agreements for the licensing of trade secrets and unpatented technology, including confidential know-how

Strategizing other means to protect confidential information, which may not qualify for trade secret protection


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Experience

  • Preparing and prosecuting hundreds of utility and design patent applications
  • Representing a client in the semiconductor industry in an ex parte reexamination proceeding, resulting in a reissued patent
  • Working with clients in various technology industries including telecommunications, electrical and computer science, gaming, robotics, computer software, e-commerce, digital signal processing, semiconductor chip fabrication, financial services, medical devices, and the mechanical arts
  • Preparing and prosecuting utility and design patents for high-profile domestic and international clients
  • Preparing patent availability, infringement analysis, and freedom-to-operate reports
  • Performing patent searches related to patent availability and patent infringement
  • Managing all aspects of international and foreign patent applications including communicating with foreign associates
  • Preparing thousands of replies to Patent Office Actions arguing for the patentability of patent applications
  • Drafting over 100 patent applications ranging in technology fields from artificial intelligence, wireless communications, antenna design, semi-conductors and memory chip design, industrial automation, online banking systems, encryption, software-defined networking, and network function virtualization
  • Preparing and filing over 50 new patent applications for a variety of clients having expansive technical fields
  • Prosecuting numerous patent applications in the fields of medical devices, imaging devices, financial software, business methods, and more
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