Episode 25: What one year of managing trade secrets teaches you

Summary

In this episode of the Reasonable Measures Podcast, Chris Buntel speaks with Pape Dieng, IP Director at the Wyss Center, about what he has learned during his first year managing trade secrets and intellectual property inside a collaborative research environment.

Pape explains that research organizations often have a natural culture of publishing, sharing, and collaboration. While that openness is valuable, it can also create risk when commercially valuable information is disclosed too early or without the right protections in place. His first year has focused heavily on building an IP culture, helping researchers understand confidentiality, and showing them that trade secret protection is not something to fear. It is a way to protect the value of the startups and innovations they are creating.

The conversation also explores why patents are not always the right path, especially for AI based innovation, algorithms, know how, and core technical value that may be better protected as trade secrets. Chris and Pape emphasize that trade secrets can help research driven startups build a stronger and more valuable IP portfolio, particularly when preparing for investors, partners, and commercialization.

The main takeaway is clear: one year of managing trade secrets teaches you that the work is not just legal. It is cultural, practical, and deeply tied to how organizations identify and protect value. Trade secret management works best when researchers understand what should be protected, why it matters, and how to build reasonable measures into the way they already work.

Takeaways

• Trade secret protection in research environments starts with culture. Researchers need to understand that confidentiality and IP protection are not barriers to innovation, but tools for preserving value.

• Researchers often understand patents before they understand trade secrets. IP leaders need to use concrete examples, repeat key points, and translate legal concepts into practical language.

• Collaborative research environments create unique challenges because scientists, clinicians, universities, and outside partners may all have different expectations around publishing and disclosure.

• Patents are not always the best strategy. For some innovations, especially AI based tools, algorithms, technical know how, and core process knowledge, trade secret protection may be the stronger path.

• Trade secrets can make startup IP portfolios stronger and more complete. Instead of showing investors only a few patent filings, startups can demonstrate a broader set of protected assets.

• The best sign of success is behavior change. Pape says he will know the culture is working when researchers come to him proactively and say they may have something valuable that should be kept secret.

• The biggest lesson from the first year is to keep it simple. Pape’s advice is to be pragmatic, follow the value, identify what matters most, and protect it in a way researchers can actually use.

Transcript

Chris Buntel (00:14)
Hi, and welcome to another episode of Reasonable Measures. LinkedIn is a really interesting place where, for years, you can be posting content, getting feedback, asking questions, getting answers, and never actually talk to the person. And I'm really delighted to have our guest contributor today break that mold. So Pape and I were talking back and forth on LinkedIn, but I could have passed him on the street and not even known who he was.

But now we've talked a couple of times and he's a great guy. So I'm Chris Buntel, one of the Co Founders and Chief IP Officer of Tangibly. Pape, it's great to have you here with me. Maybe you could introduce yourself.

Pape Dieng (00:47)
Yep.

Yeah, thank you, Chris. Thank you for having me. My name is Pape Dieng. I'm the IP Director of the Wyss Center. And the Wyss Center is a translational research hub where we help startups in neurotechnologies.

Chris Buntel (01:20)
Fantastic. It's great to have you here. And the topic today is going to be a little bit different from what we normally do. Typically, we will have some trade secret topic or interesting new case development. But today, I wanted it to be much more personal, just talking about your first year at the institute and why you're interested in trade secrets, and maybe what you've done so far and what you hope to accomplish going forward.

So this is meant to be much more personal and experience based. So how's it going after one year in Switzerland?

Pape Dieng (01:58)
Oh, excellent, excellent. I'm very happy and very excited. The Wyss Center is a collaborative environment where we have scientists, clinicians, and researchers. So it's very exciting working with brilliant minds.

And yeah, it has been very, very interesting. I learned a lot of things because I come from the corporate world, so it's completely different from what I used to know in the corporate world.

One of the most important things I learned is culture. I realized that setting a culture in terms of IP, confidentiality, and trade secret management is very important, and it takes a lot of interaction with researchers and research scientists to explain that it's nothing to be afraid of.

Chris Buntel (02:57)
When you joined a year or so ago, was there any culture at all? When you came in the door on the first day, what kind of temperature check was there for intellectual property?

Pape Dieng (03:09)
I remember before arriving that I was a bit stressed. I was asking myself, how am I going to talk with scientists coming from the academic world and then try to explain to them that they are in a collaborative environment, which is good, but at the same time, we need to protect and keep some results confidential?

I was a bit afraid of the way I was going to handle it. There was no IP Director position before I joined the Wyss Center, so this made it a bit more complicated for me.

But when I arrived, I realized that the scientists and collaborators understood because they are working for their own startups. So finally, it was easy to explain to them that it was in their interest to capture the value of the startups they're creating.

Chris Buntel (04:26)
Interesting.

And it's often difficult to translate. I kind of joke that it's like translating from English to English. There's legal English, and then there's R&D English or normal people English. And that's actually more difficult than people think. Because a lot of us who are trained on the legal side or on the IP side, we can talk to each other. I could talk to you about patents or trademarks or trade secrets. But to speak to researchers in a way that they understand and appreciate the value of what you're talking about is surprisingly challenging. I don't know if you've had the same experience.

Pape Dieng (05:10)
Yeah. Yeah.

It's really challenging. They are brilliant minds, and you're like, okay, they're going to understand. They tell you, okay, Pape, I think I got it. And then you realize that they didn't really get it. So you need to come up with concrete examples so that they clearly understand why it's important.

For example, sometimes they don't delimit what they can or cannot share. Also, when they have NDAs that are signed, they're like, okay, I think we have a contract, so I can disclose everything I have as results.

So there is some tuning that needs to be done, and this is why I talk a lot with my researchers. It's all about talking and repeating things. At the end, they understand, and they become kind of ambassadors of IP. They become allies, and they know it's in their interest.

Chris Buntel (06:25)
Well, and my experience is that universities and nonprofits are terrible at trade secrets. If they know anything about IP, it would be patents and maybe trademarks, but trade secrets almost go against their DNA, where they've been raised since early in their career to publish and present and share.

They are very open and excited about telling the world what a great researcher they are. How do you fight that or control that in a way that's not too offensive or too difficult on them, or makes you look like the bad guy? What's your experience there?

Pape Dieng (07:05)
Yeah, I'd say it's really challenging. And you say that it's in their DNA to publish. They want to share, clearly. And when you're like, okay, guys, this you cannot share, you're clearly the bad guy.

So once again, I discuss a lot with them. And indeed, they know a lot about patents. This is the first thing they talk about when they meet me. But sometimes we are in a situation where having a patent filing is not the best thing to do. So then you try to introduce this trade secret management thing, and it's not easy.

At the Wyss Center, I can control and discuss because I have contact with all the researchers. But because we are in a collaborative environment and we work with universities and partners, it's a bit difficult sometimes to have this control with the other partners, which are also academic, even if they have TTOs.

So I interact a lot with the TTOs of the partners also in order to help them understand that publication is a good thing, but sometimes having something patented first or keeping something secret, keeping the core value secret, can also be beneficial for them.

The goal at the end is to have startups created with real impact in people's lives. So it's not an easy task.

Chris Buntel (09:05)
It's tough work. I was talking to a university recently in Singapore about how, if you talk about trade secrets in the context of launching a startup, the conversation's a little bit easier. The researchers can see that there's a commercial entity that will be spun out, and maybe having a couple things secret or protecting the crown jewels as secrets instead of publishing, it's like they finally start to understand.

But if you're just talking about research in general, it's again, very difficult.

Pape Dieng (09:42)
Yeah. And there is also this point I realized. At the end, you will be facing investors, and they can be skeptical about the way you have put in place a good trade secret management system and that you have kept things secret, because they know that these people evolve in a very collaborative environment.

So maybe this is why sometimes universities tend to go down this patent path. They patent so that they have some clear asset to show to the investors.

But I think it's not impossible. At the Wyss Center, this is one of my goals. We're trying to put that in place because it's important, especially when it comes to AI based innovation and algorithms. You cannot always file a patent. It's not always the good move.

I won't tell you that I have the solution yet, but I'm working on it, and we're trying to be pragmatic. We try to follow the value, capture the high value, and be pragmatic. This is the way we're doing it for now.

Chris Buntel (11:21)
And have you launched any startups so far? Or do you have any coming up reasonably soon where IP and maybe trade secrets are a part of the value that you're contributing?

Pape Dieng (11:33)
Yeah, we have a startup that spun out just recently, and in the assignments of the IP, there was a part related to trade secrets and know how. But to be honest, it could have been more than this, and this is the work I'm trying to do right now for the next startup that will spin out from the Wyss Center, because it's really important.

Chris Buntel (12:05)
That's great. And even including it at all is better than a lot of universities. A lot of nonprofits and universities don't even address trade secrets, or maybe have one line in a contract or a deal document. So you're ahead of the curve already. Keep improving.

Pape Dieng (12:23)
That's good. Thanks.

It's really interesting. I spoke with one of my university partners last week, and it seems that they are more and more integrating this trade secret aspect because he told me that they were working on it. So I'm happy to hear this kind of thing.

It means that it will ease the interaction with the university. When you have some professors who want to publish, sometimes it's really difficult to make them understand that there's something they need to keep secret. It's not in their DNA. So it's hard work and a long journey to convince them this way.

Chris Buntel (13:13)
Yeah, definitely. Well, last year, my personal favorite word of the year was outcome. And I really started using that word often. This year, it's still only five months in, so I don't have a new favorite. I still like outcome.

But at Tangibly, we often talk about three main outcomes. And the third one is actually really relevant to startups and research institutes, which is that trade secrets allow you to demonstrate your value or enlarge or grow your IP portfolio.

Because a lot of times, a startup has very few traditional forms of IP. You might have one patent application, maybe two or three if you're lucky, a trademark or two, maybe it's registered, maybe it's not. And that's about it. You're looking at five, maybe 10 assets, if you're lucky.

But if you include trade secrets, suddenly you have 20 assets or 50 assets or 100 assets. Now, they're mostly trade secrets, but still, if you're talking to a venture capitalist, an angel investor, or a government funding agency and say, we have an IP portfolio with 78 assets, you look really impressive. You look big and strong and investable compared to if you go into the same conversation saying, well, we have three. It's just a whole different conversation.

Pape Dieng (14:40)
Absolutely, absolutely, Chris. This is 100 percent what I think. I would invite you to come and make some presentation at the Wyss Center because it's exactly what I think. It makes the valorization easier at the end, and it is in their interest. So yeah, 100 percent. Absolutely.

Chris Buntel (15:19)
So what are your goals coming up? In your second year, what do you hope to accomplish? Or how do you know if you're successful going forward?

Pape Dieng (15:29)
I will continue to work in the same direction. I think I will know that I'm successful when my scientists and researchers come and see me and say, Pape, I think we've got something. Maybe we will not patent it, but can you help us keep this secret?

That will be the best reward I could have coming from them. And I've seen this change coming because now they have reasonable measures put in place. They have access control when they have a result. When I hear these kinds of things, I'm really happy because we're talking about this. We're talking about, okay, we have some results we may publish, but maybe we will not publish everything because we need to identify the core value and how we can exploit it later in our startups.

I think this will be one of my best rewards. It's not in terms of number of patents. I'm not counting the number of patents, but the behavior. The way they behave is a good point.

Chris Buntel (16:41)
Well, it's also a reflection on the training that you've provided. Again, most researchers don't know anything about IP, or certainly nothing about trade secrets. That day when they come into your office and say thank you, it really means you've been successful in teaching and educating them and getting them to at least think about IP and the value it can create.

Pape Dieng (17:12)
Absolutely. Exactly. And that's the point. It takes some time. As I said in the beginning, it's about setting a culture. And when you have it, things become easier, and then you can have a good IP strategy to help them. That's it.

Chris Buntel (17:38)
Fantastic. So we're almost out of time. Any last minute words of advice for people watching the podcast or any good reflections?

Pape Dieng (17:49)
Yeah, if I have some advice to give, I would say keep it simple. I think it's really important because when it's complicated for scientists, they get lost. With my startups, they have a lot of decisions to make. So when it becomes complicated, they get lost.

Keep it simple, be pragmatic, and follow the value. I think this is the most important point. We need to follow the value and identify it so that we can capture it and valorize it in the best way.

Chris Buntel (18:28)
Fantastic. Keep it simple. And I hope to see you in Switzerland. I'll have to find a reason to go out and visit.

Sounds good. Thanks a lot, and I'll talk to you soon. Okay, bye now.