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James Pooley

IP Litigator and Trade Secrets Expert

James Pooley, a Professional Law Corporation

James Pooley is one of the world’s foremost experts in trade secret law and management. His first volume, “Trade Secrets,” updated semi-annually, is the leading lawyer’s desk reference on the subject. His latest business book is “Secrets: Managing Information Assets in the Age of Cyberespionage” (Verus Press, 2015).

Mr. Pooley’s career as a sought-after advisor, IP litigator, and information security expert spans over 45 years. His many leadership roles include his tenure as president of the American Intellectual Property Law Association and as chairman of the National Inventors Hall of Fame.

On the international stage, Mr. Pooley served as Deputy Director General of the World Intellectual Property Organization in Geneva from December 2009 to November 2014, where he was responsible for the international patent system.

Having returned to Silicon Valley, Mr. Pooley established a private law practice where he specializes in litigation strategy, expert witnessing, and information security counseling.

Recent Articles by James Pooley

The Judicial Balancing Act: How Judges Manage Competing Interests in Trade Secret Cases

I was recently reminded of a contest that we often played in Scouts, called Kim’s Game. Derived from a story in Rudyard Kipling’s 1903 novel Kim, it gave you a few minutes to stare at a tray full of diverse objects you might find in a junk drawer – things like a key, pocketknife, nickel, compass, button, crystal. At the end of the allotted time, you were challenged to write down as many as you could remember. My recollection was triggered by a court order. Silicon Valley startups Wisk Aero and Archer Aviation have been slugging it out in trade secret litigation over “flying taxis” that are designed to take off and land like helicopters but fly with wings and propellers. The basic technology has been around for quite a while but making it practical as a battery-powered (and ultimately autonomous) taxi service demands a lot of creative engineering. Wisk, a joint venture between Boeing and a company owned by Google founder Larry Page, has been developing its models for more than a decade. Aero, which has a relationship with United Airlines, is a more recent entrant, and ramped up its workforce by hiring away 17 of Wisk’s engineers, including its vice president of engineering. For more salacious details, see this piece in Fast Company.

The Artificial Distinction Between Trade Secrets and ‘Confidential Information’

One of the most frustrating questions I get from clients asks “what is the difference between ‘confidential’ and ‘proprietary’ information?” Or, “how do I help employees distinguish between either of those terms and real ‘trade secrets?’” Then there are people, including some judges, who trivialize the importance of some useful business information by saying it doesn’t “rise to the level of a trade secret.” That last one makes no sense these days, as we’ll see shortly. But first let’s identify the source of this nomenclature problem: it’s an outfit you’ve probably never heard of called the American Law Institute.

‘Reasonable Efforts’ Require Care and Consistency

At this moment, there is a fellow riding a bus in London who will determine the fate of your secrets. To be more precise, he’s on the Clapham bus; but he has no name. In fact, he’s a fictional character originally imagined by 19th Century journalist Walter Bagehot, who thought that “public opinion” was best described as the “opinion of the bald-headed man at the back of the omnibus.” The idea was picked up by the English courts as a metaphor for the “reasonable person” standard that is applied in all sorts of cases, from criminal to personal injury to contract interpretation. It also has special application to trade secrets, which we’ll get to in a minute.

Government-Forced Technology Transfer Is Almost Always Wrong

What does the invasion of Ukraine have to do with COVID-19? Would you believe intellectual property is the link? Stay with me on this; it’s an interesting story. Recently, it was confirmed that the Main Intelligence Department of the Ministry of Defense of Ukraine – apparently with some help from volunteer hackers – managed to breach the network of Russia’s most guarded nuclear power facility and make off with extremely valuable trade secrets. The Beloyarsk Nuclear Power Plant contains the world’s only two operational “fast breeder” reactors. More than 20 countries, including the U.S., Japan and France, have been working for decades on this technology, which is supposed to be able to extract close to 100% of the energy from uranium, compared to about 1% for light water reactors. In other words, this is a process that can produce large amounts of energy while completely consuming the fuel and creating virtually no nuclear waste. Whoever is able to commercialize it will make a fortune. So far, no one has come close to the Russians.

Past Events with James Pooley

IPWatchdog Virtual International IP Masters™ 2022

March 7 @ 8:30 am - March 10 @ 12:30 pm EST

2018 Rocky Mountain IP & Technology Law Institute

May 31, 2018 @ 9:00 am - June 1, 2018 @ 4:30 pm EDT

US Defend Trade Secrets Act Seminar and CLE

June 21, 2016 @ 11:00 am - 12:30 pm EDT