Posts Tagged: "Defend Trade Secrets Act"

Using Trade Secret and Patent Protection in Tandem for Comprehensive IP Coverage

Your company (or your client) creates an innovative idea that is going to blow the market away. While still safeguarding your invention as a trade secret, you file a patent application with the United States Patent and Trademark Office (USPTO) and get the product ready for launch. After product development, a key designer leaves the company for a competitor. Not long after you issue a press release on your innovative product, that competitor launches a copycat product. Do you have to wait for the patent to (hopefully) issue prior to filing suit against the competitor? Or can you take immediate action on trade secret misappropriation grounds? Ultimately, it depends on where you file suit.

In Memoriam: Senator Orrin Hatch

Funeral services will be held in Salt Lake City, Utah,  on Friday, May 6, for Senator Orrin Hatch, who died on Saturday, April 23, 2022, at the age of 88. Hatch was Utah’s longest-serving senator, first sworn in by Vice President Nelson Rockefeller as a member of the 95th Congress in 1977, and co-author of one of the most significant IP bills ever passed, the 1984 Hatch-Waxman Act.

Ex Parte Seizures Five Years After the Enactment of the Defend Trade Secrets Act

Almost five years has passed since the enactment of the Defend Trade Secrets Act (DTSA) on May 11, 2016, which provides for civil relief for the theft of trade secrets. The most controversial provision, 18 U.S.C. § 1836(b)(2), authorizes a federal court to issue an order, in extraordinary circumstances, and upon an ex parte application based on an affidavit or verified complaint, to provide for seizure of property necessary to preserve evidence or to prevent the propagation or dissemination of the trade secret. Thus, the issuance of a seizure order is limited to “extraordinary circumstances.” According to the House Report, the “ex parte seizure provision is expected to be used in instances in which a defendant is seeking to flee the country or planning to disclose the trade secret to a third party immediately or is otherwise not amenable to the enforcement of the court’s orders.” In other words, it is intended to stop the dissemination of a trade secret, especially overseas, before its value has been lost through public disclosure. Thus, it provides a trade secret owner with the ability to mitigate the risk that trade secrets are irrevocably lost, transferred, or moved beyond the jurisdiction of the court.

Take Heed: Lessons from the Top Trade Secret Cases of 2020

One of the uniquely fascinating aspects of trade secret disputes is that they are laced with unbridled emotions, accusations of treachery, and actors who angrily disagree over basic facts. In other words, they provide a perfect metaphor for the year 2020. Let’s take a look back at the cases this year that are worthy of comment, either because they involved some unusual set of facts or because they provide useful guidance for behaving better in 2021.

Defending Trade Secrets with Protective Orders

Plaintiffs in trade secret cases are often faced with the difficulty of protecting their trade secrets, especially during trial, when different rules apply than during the pre-trial proceedings. It certainly makes little sense for a party to seek to prevent a defendant from disclosing their trade secrets only to have them disclosed to the public during discovery or trial. In recognition of this dilemma, Congress included Section 1835(b) (“Rights of Trade Secrets Owners) in the Defend Trade Secrets Act, which seeks to address this issue by requiring district courts to permit the trade secret owner the “the opportunity to file a submission under seal that describes the interest of the owner in keeping the information confidential.”