IPO Sends Letter to Senate Leaders in Support of Defend Trade Secrets Act

by McDonnell Boehnen Hulbert & Berghoff LLP
Contact

Yesterday, the Intellectual Property Owners Association (IPO) sent a letter to the Chairman and Ranking Member of the Senate Committee on the Judiciary expressing "strong support" for the Defend Trade Secrets Act of 2015 (S. 1890), which was introduced in the Senate in July.  A corresponding bill (H.R. 3326) was introduced in the House.

The Senate bill, which is sponsored by Sen. Orrin Hatch (R-UT) and which has received bipartisan support from more than a dozen co-sponsors, would amend Title 18 of the United States Code to provide Federal jurisdiction for trade secret theft.  In particular, the legislation would allow the owner of a trade secret to bring a civil action in U.S. district court for misappropriation of a trade secret that is related to a product or service used in, or intended for use in, interstate or foreign commerce.  The Defend Trade Secrets Act would allow trade secret owners to secure a court order providing for the seizure of property necessary to prevent the propagation or dissemination of a trade secret (if the court determines, inter alia, that a temporary restraining order under Rule 65 of the Federal Rules of Civil Procedure would be an inadequate remedy).  The bill would also require the court issuing the order to hold a seizure hearing within seven days of the issuance of the order in which the party obtaining the order would have the burden of proving that the facts supporting the order are still in effect.

Other remedies provided by the legislation for the misappropriation of a trade secret include an injunction to prevent any actual or threatened trade secret misappropriation, payment of a reasonable royalty for future use of the trade secret in exceptional circumstances that render an injunction inequitable, damages for actual loss caused by the misappropriation of the trade secret, damages for any unjust enrichment caused by the misappropriation of the trade secret, exemplary (treble) damages when a trade secret is willfully and maliciously misappropriated, and attorney's fees for willful and malicious misappropriation of a trade secret or a bad faith claim of misappropriation.  Actions under the Defend Trade Secrets Act would have to be commenced not later than five years after the date on which the misappropriation is discovered (or by exercise of reasonable diligence should have been discovered).

The legislation would also require the Attorney General, in consultation with the Intellectual Property Enforcement Coordinator, Director of the U.S. Patent and Trademark Office, and heads of other appropriate agencies, to submit to the Senate and House Judiciary Committees a report on:

(1) The scope and breadth of the theft of the trade secrets of United States companies occurring outside of the United States.
(2) The extent to which theft of trade secrets occurring outside of the United States is sponsored by foreign governments, foreign instrumentalities, or foreign agents.
(3) The threat posed by theft of trade secrets occurring outside of the United States.
(4) The ability and limitations of trade secret owners to prevent the misappropriation of trade secrets outside of the United States, to enforce any judgment against foreign entities for theft of trade secrets, and to prevent imports based on theft of trade secrets overseas.
(5) A breakdown of the trade secret protections afforded United States companies by each country that is a trading partner of the United States and enforcement efforts available and undertaken in each such country, including a list identifying specific countries where trade secret theft, laws, or enforcement is a significant problem for United States companies.
(6) Instances of the Federal Government working with foreign countries to investigate, arrest, and prosecute entities and individuals involved in the theft of trade secrets outside of the United States.
(7) Specific progress made under trade agreements and treaties, including any new remedies enacted by foreign countries, to protect against theft of trade secrets of United States companies outside of the United States.
(8) Recommendations of legislative and executive branch actions that may be undertaken to—
    (A) reduce the threat of and economic impact caused by the theft of the trade secrets of United States companies occurring outside of the United States;
    (B) educate United States companies regarding the threats to their trade secrets when taken outside of the United States;
    (C) provide assistance to United States companies to reduce the risk of loss of their trade secrets when taken outside of the United States; and
    (D) provide a mechanism for United States companies to confidentially or anonymously report the theft of trade secrets occurring outside of the United States.

Following introduction of the bills, S. 1890 was referred to the Senate Judiciary Committee and H.R. 3326 was referred to the House Judiciary Committee and the Subcommittee on Courts, Intellectual Property, and the Internet.

The IPO letter in support of the legislation contends that "current legal tools available to remedy trade secret theft are inefficient," and that "current federal law in this area has limitations."  While commending the FBI and Department of Justice for doing a good job enforcing the Economic Espionage Act, the IPO notes that both "have limited resources and numerous priorities and are not able to pursue all trade secret thefts."  The IPO points out that the Defend Trade Secrets Act would allow its members to protect their trade secrets.  In addition, the IPO argues that enactment of the legislation "will place the United States in a position to promote strong trade secrets protection globally, both by creating the “gold standard” by which countries can model their trade secrets laws and by placing the United States in a better position to negotiate trade agreements and other international treaties that provide strong trade secrets protection."

Written by:

McDonnell Boehnen Hulbert & Berghoff LLP
Contact
more
less

McDonnell Boehnen Hulbert & Berghoff LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):
hide

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.

Security

JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.