USA Law and Practice Contributed by: Claudia Ray, Joseph Loy, Josh Berlowitz and Andrew (Keum Yong) Lee, Kirkland & Ellis LLP
(although the employee does not have to provide such information); • asking the employee if they have returned or destroyed electronic and physical copies of com - pany materials; • asking the employee to sign an affidavit of com - pliance or a written statement that they will not disclose confidential information or company trade secrets and that they have searched for, located and returned or destroyed all company property; and • asking the employee if they have any questions regarding the confidentiality of any trade secrets. 4. Safeguarding Against Allegations of Trade Secret Misappropriation 4.1 Pre-Existing Skills and Expertise An employee’s general knowledge and skills, including those already possessed or learned from a prior job, do not count as trade secrets that the employee is prohibited from using at a subsequent position. When an individual accepts new employment with a com - peting entity, however, the employee needs to ensure that they only rely on such general knowledge and skills, and do not disclose any trade secrets or confi - dential information to the new employer. In some situations, it may be difficult to separate the trade secrets from an employee’s general skills, expe - rience and knowledge. To account for those instances, the common law developed an “inevitable disclosure” doctrine (see PepsiCo, Inc v Redmond , 54 F.3d 1262, 1269 (7th Cir. 1995)), which recognises that there may be scenarios where the duties of the employee’s new position inevitably require the disclosure of the trade secret from the employee’s former employment. In such a situation, the previous employer may seek an injunction to prevent the employee from working with a subsequent employer at all (or in a directly competi - tive role) for a specified time (eg, one year). However, even if such a risk of inevitable disclosure exists, many courts will deny injunctive relief on this basis alone, absent actual proof of misappropria - tion, preferring a policy of free employee mobility at the early stage of any litigation (eg, Janus et Cie v
Kahnke , 2013 WL 5405543, at *2 (S.D.N.Y. Aug. 29, 2013)). These same courts nevertheless often enter - tain a cause of action for trade secret misappropria - tion – and even grant permanent injunctions – on a fully developed factual record proving elements of the claim. 4.2 New Employees When hiring a new employee, there are various steps that an employer can take to minimise the risk of a trade secret claim, including the following: • performing an analysis of the risk of litigation before hiring the employee; • ensuring that the employee is not placed in a posi - tion where they will inevitably rely on and use a former employer’s trade secrets; • requiring the new employee to sign a non-disclo - sure agreement and explaining the trade secret confidentiality policy; • reminding the employee not to disclose any trade secrets or confidential information from prior posi - tions; • training the employee on trade secret policies; • requiring a new employee to sign a contract pre - venting them from disclosing trade secrets and/or confidential information from a previous employer; and • assessing whether the new employee is subject to a non-compete agreement. There are no procedural prerequisites or require - ments for filing a trade secret misappropriation law - suit, although a lawsuit may be preceded by a cease- and-desist letter or a period of prior communication between the parties. Whether in anticipation of litiga - tion or not, a trade secret owner may find it useful to send notices to former employees that go on to work for the trade secret owner’s competitors, reminding the former employee of their confidentiality obliga - tions. 5. Trade Secret Litigation 5.1 Prerequisites for Filing a Lawsuit The trade secret owner may likewise benefit from sending a notice to the former employee’s new
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