TechLaw: NDAs are not one size fits all; they are dangerous!

The subject of nondisclosure agreements–NDAs–is often treated as routine, not only in the US but also in the UK and Europe. Editor Donna has reviewed and signed a few, modifying only limited areas of ‘boilerplate’. Our contributor today is an attorney specializing in technology law, Mark Grossman, JD, and he explains to us that an NDA should not be treated quite so cavalierly–and that red flags should fly any time a trade secret is involved. (Editor’s emphases are italicized and bold.)

In the world of tech deals — more than other types of deals — my clients want to sign nondisclosure agreements quickly. I’m sure that many people will disagree with me on this one, but I like to avoid NDAs in the early stages of a deal. My feeling is that you shouldn’t be exchanging secrets with strangers and that doesn’t change no matter what they’ve signed.

Experience tells me that most deals at the “initial feeler” stage never reach fruition. It’s a long way from that first lunch to a closing and a bottle of champagne. I say skip the paperwork and legal entanglements until you’ve at least gone as far as thinking: “This is getting interesting and serious.” In the meantime, keep your secrets to yourself.

Usually, you can get through the early stages of a negotiation with a demonstration of what “it” can do without revealing how it does it. Of course, if what it does is as much a secret as how it does it, then my generalization may not be true for you.

In case you’re not familiar with NDAs, the idea behind them is that you’ll reveal confidential information only if the other side agrees not to improperly disclose or use the information. Right here, it starts getting tricky because you have to decide to whom they can disclose it and for what use.

Watch out for a form with a line for your company name. If you’re tempted to sign it, I have some simple advice: Don’t. Not ever.

Every NDA is customized. Since tech lawyers see NDAs constantly, writing a good one should never be an exercise in reinventing the wheel. Still, they do require some thought.

For example, even the common name “Nondisclosure Agreement” is a bit deceptive because you not only want them to keep your secrets, you also don’t want them to use them for their own benefit.

I’ll typically include a provision like, “The company shall use the Secret Information only for the following purposes….” I’ll then go on to list those purposes, which will vary in every deal but never include exploiting my client’s idea for their own benefit. So, it’s not just “nondisclosure,” it’s also about not using my client’s idea.

Make sure the agreement does a good job of distinguishing between confidential information and trade secrets. This is important because most NDAs have an expiration date after which a party is free to reveal the confidential information — and you never want that with a trade secret.

A trade secret is an idea that derives independent economic value from not being generally known or readily ascertainable by proper means by other persons who could obtain economic value from its disclosure. It must also be the subject of efforts to maintain its secrecy. One most famous example is Coca-Cola’s secret ingredient.

While you could argue that the obligation to maintain the confidentiality of your secrets should last forever, most people hate to have long-term agreements hanging out there. It’s usually reasonable to compromise and come up with an expiration date when we’re talking about confidential information that doesn’t rise to the level of a trade secret.

Ironically, in the tech world, this expiration date usually doesn’t need to be zillions of years in the future because technology evolves so fast that last year’s big secret is next year’s so-what.

Having said this, if you’re revealing a trade secret, the obligation to maintain the secret absolutely must, without exception, last forever. Once the obligation to maintain the secret is gone, so is your trade secret. No court will protect your right in that trade secret after you’ve consented to it being publicly revealed.

Moreover, by thoughtlessly signing a generic NDA, which mushes everything together, including your trade secret, you just gave away your company’s most important asset. Oops.

Our Contributing Writer, Mark Grossman, JD, has nearly 30 years of experience in business law. His practice focuses on the negotiation of enterprise IT deals of every kind and the handling of many kinds of technology-related legal issues.He is an attorney with Tannenbaum Helpern Syracuse & Hirschtritt in New York City; the Best Lawyers in America listing named him 2016 “Lawyer of the Year” for Technology Law in NYC. Mr. Grossman has been Special Counsel for the X-Prize Foundation and SME (subject matter expert) for Florida’s Internet Task Force. New York City Bar’s Computer Law Committee and Florida Bar’s Computer Law Committee. More information on Mr. Grossman here. Originally published on LinkedIn.



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