Baker McKenzie

Firm overview:

Global firm Baker McKenzie is one of the world’s largest full-service IP litigation practices, with many top-tier-rated IP practices. The firm’s top-10 IP clients have combined revenues of more than $500 billion.

Baker McKenzie obtained a landmark injunction in China regarding inevitable disclosure and executive mobility, and advised the European Commission in its development of the EU’S trade secrets directive. The firm also acts as a confidentiality advisor to one of the world’s leading fashion houses.

The firm acts for multinationals across multiple industries, including fintech, healthcare, consumer, energy and manufacturing. The firm provides competitive assessments and develops clients’ trade secrets protection, monitoring and enforcement programmes.

On disputes, the firm acts at all stages of litigation and alternative dispute resolution involving trade secrets and related actions such as inevitable disclosure, breach of confidence and unfair competition.

Baker McKenzie develops rapid response plans in the event of breach, including seizure and other emergency relief actions to prevent imminent disclosure. The firm also develops global codes of conduct, policies, due diligence protocols, risk-based covenants and agreements to create a comprehensive approach to protecting and preserving trade secrets.

Team overview:

Baker McKenzie has a global team of advisers working on trade secrets matters across four regions: Asia (led by Kherk Ying Chew in Kuala Lumpur and Grace Shao in Taipei); Europe (led by Christina Duch in Barcelona and Eva-Maria Strobel in Zurich); North America (led by Christine Streatfeild in Washington, DC and Bradford Newman in Palo Alto); and South America (led by Juan Pablo Concha Delgado in Bogota).

Partner Christine Streatfeild is on the Steering Committee for the North America Trade Secrets Practice. Streatfeild focuses on trade remedies and unfair competition cases, including antidumping and countervailing duty cases, and Section 337 intellectual property and trade secrets disputes.

Litigation partner Bradford Newman is chair of the North America Trade Secrets Practice. He is outside general counsel to the DFINITY FOUNDATION, creators of the Internet Computer, a decentralised, open-source, general-purpose blockchain, designed to host smart contracts. Newman represents DFINITY in all aspects of its data protection and trade secrets.

In May 2024, Justin Becker joined the trade secrets practice in Washington, DC, after nearly nine years at Sidley Austin. Becker has experience of trade remedy and investigations before the US Department of Commerce and the International Trade Commission (ITC).

Key matters:

Baker McKenzie has:

• represented a Brazilian aircraft designer in a trade secret dispute involving a development agreement;
• represented a shredder manufacturer in a trade secrets dispute before the ITC;
• represented a subsidiary of a global diversified conglomerate in multiple courts in Germany, in an ongoing dispute with former employees who misappropriated substantial and business-critical technical and business information when terminating their employment;
• successfully arbitrated on behalf of a global commercial bank in asserting a claim of trade secret misappropriation amounting to $5 million;
• advised a global sportswear brand on an action against a syndicate of technology experts obtaining confidential information about new product launches and using automated ‘bot’ technology to secure very high proportions of high-profile new products;
• secured an injunction on behalf of an information and technology healthcare solutions provider in Singapore against former employees who had misappropriated more than 40,000 confidential files and data. Criminal investigations commenced under the Computer Misuse and Cybersecurity Act; and
• advised a global manufacturer of office supplies on its contentious theft of trade secrets case resolution against a Chinese entity. The defendants were barred from importing into the US shredders made by the client for five years.

Clients:

DFINITY, Acorns Advisors, Sundae, Maxor National Pharmacy Services, ITT, L'Oréal, Expedia