The Defend Trade Secrets Act of 2016 aims to modernize and strengthen trade secret law.

The Defend Trade Secrets Act of 2016 aims to modernize and strengthen trade secret law.

The most significant trade secret reform in decades is about to become law. The Defend Trade Secrets Act of 2016 (DTSA) will modernize and strengthen trade secret law and address a number of issues that trade secret owners commonly encountered under current laws that were previously based solely on state law.

In April, DTSA sailed through the US Congress with overwhelming bipartisan support and only two votes of opposition, a rare accomplishment. On April 27, the US House of Representatives passed DTSA by a vote of 410 to 2.^[1] Earlier in the month, on April 4, the US Senate unanimously approved DTSA by a vote of 87 to 0.^[2] DTSA was unanimously approved by voice votes in the US Senate Committee on the Judiciary on January 28 and by the US House Committee on the Judiciary on April 20.^[3]

DTSA is expected to be signed into law in early May. Under the US Constitution’s Presentment Clause, the president has 10 days to sign or veto legislation. ^[4] Given the broad, bipartisan support for DTSA and a prior statement of support by the Obama Administration,^[5] the law is expected to be enacted shortly.

During the debate, Congress recognized the important role of trade secrets to the US economy and national security. Trade secrets touch nearly every sector of the economy, including the technology, financial institution, health, manufacturing, automobile, agriculture, and military industries, among many others.^[6] Trade secrets can include commercial information, such as “financial, business, scientific, technical, economic, or engineering information.”^[7] Some trade secret examples include prototypes, plans, processes, codes, designs, methods, and techniques.

Currently, 47 states have enacted some form of the Uniform Trade Secrets Act (UTSA).^[8] These state-based remedies may be effective for the misappropriation of a local trade secret. However, under state law, efforts to obtain remedies for stolen trade secrets taken to other jurisdictions can be cumbersome, costly, and ineffective. For example, the process to obtain a deposition of a witness in another state can require multiple court orders and delay. Instead, in federal court, parties have nationwide subpoena service power.^[9]

The DTSA’s Key Features

DTSA preserves the option for a trade secret owner to use state law remedies or to select the new federal remedies. It modernizes and enhances trade secret protection laws and provides more uniform protection for trade secret owners. Additionally, DTSA amends the Economic Espionage Act of 1996 (EEA),^[10] which provides for federal criminal penalties for trade secret misappropriation and foreign economic espionage and adds new federal civil protections.

Some of the legislation’s key features include the following:

• Federal Private Right of Action: For the first time, a federal private right of action could be used to remedy trade secret misappropriation for trade secrets “related to a product or service used in, or intended for use in, interstate or foreign commerce.”^[11] Remedies would no longer be limited to state law. More important, trade secret owners would have a choice about whether federal or state law was best to address the misappropriation under the circumstances.

The federal court process would be more efficient and effective to obtain witness depositions and discovery, particularly when a trade secret has already been or may be transported across state lines. Federal civil remedies are already available for other forms of intellectual property, including copyrights, trademarks, and patents. The legislation provides the same federal options for trade secrets.

• Seizure and Recovery of Stolen Trade Secrets: The legislation provides a new ex parte seizure provision to recover stolen trade secrets pending a full court hearing.^[12] Upon a proper showing in “extraordinary circumstances,” a trade secret owner can request a short-term ex parte seizure order to seize “property necessary to prevent the propagation or dissemination of the trade secret.”^[13] The court order is served by a law enforcement officer, not a party to the case.^[14] Any seized materials would remain in the court’s custody pending further court determination.

The ex parte seizure order is subject to several restrictions, including requirements that (1) there be no other adequate equitable relief available, (2) the court has determined that the applicant is likely to be able to show that the target of the seizure misappropriated and has “actual possession” of the trade secret, and (3) the trade secret is in danger of being destroyed or removed.

DTSA provides protections to the target of a seizure order, including requirements that the court be responsible for keeping a trade secret confidential after it has been seized; the court must schedule a hearing within seven days after the seizure order was issued, and the target of the seizure order has a civil remedy for damages in the instance of a wrongful or excessive seizure.

• Employee Mobility: Based on an amendment from Senator Dianne Feinstein (D-CA), the measure provides employee mobility protections. Specifically, a court may impose an injunction “to prevent any actual or threatened misappropriation” but may not “prevent a person from entering into an employment relationship.”^[15] Any employment conditions must be “based on evidence of threatened misappropriation and not merely on the information the person knows.” Additionally, the court order may not “otherwise conflict with an applicable State law prohibiting restraints on the practice of a lawful profession, trade, or business.”^[16]

• Statute of Limitations: The statute of limitations for the federal private right of action would be three years, which is consistent with UTSA.^[17]

• New Whistleblower Protections: A bipartisan amendment offered by Senate Judiciary Committee Chairman Chuck Grassley (R-IA) and Ranking Minority Member Patrick Leahy (D-VT) that was unanimously approved on a voice vote provides legal protection to whistleblowers in certain cases of trade secret disclosure to federal or state officials, as well as to counsel. The purpose is to assist with reporting a potential violation of law, or if a trade secret is disclosed in a complaint or other filing in a legal proceeding, to ensure the filing is made under seal.^[18] The provision will require nondisclosure agreements to provide notice of the whistleblower protections “in any contract or agreement with an employee that governs the use of a trade secret or other confidential information.”

• Stronger Protections for Trade Secrets During Litigation: The legislation builds on the protective order provision under the EEA, Section 1835, by adding a new subsection that establishes new rights of trade secret owners. A court may not authorize the disclosure of trade secret information “unless the court allows the owner the opportunity to file a submission under seal that describes the interest of the owner in keeping the information confidential.” ^[19]

• Digital Protections: The legislation contains a number of new provisions to address trade secret issues and protections in the digital era. For example, the legislation provides that any seized materials in court custody shall be secured “from physical and electronic access during the seizure and while in the custody of the court.”^[20] Any seized storage medium may not be “connected to a network or the Internet without the consent of both parties” pending a full hearing.^[21] A motion for encryption can be filed “at any time” to “encrypt any material seized or to be seized under this paragraph that is stored on a storage medium.”^[22] These protections do not exist under state law.

• Enhanced Criminal Penalties for Organizations: The legislation increases the maximum penalty for an organization convicted of a criminal violation from $5 million to “the greater of $5,000,000 or 3 times the value of the stolen trade secret to the organization, including expenses for research and design and other costs of reproducing the trade secret that the organization has thereby avoided.”^[23]

• Racketeer Influenced and Corrupt Organization Act (RICO) Predicate Offenses: The legislation adds the foreign economic espionage (Section 1831) and criminal theft of trade secret (Section 1832) provisions as qualifying predicate offenses under the RICO.^[24] In appropriate cases, criminal or civil remedies may be obtained for certain conduct involving a "pattern of racketeering activity."^[25]

• Report on Theft of Trade Secrets Occurring Abroad: Given concerns about the theft of trade secrets outside the United States, the legislation requires an annual report from the attorney general addressing the scope and breadth of the problem and the role of foreign governments in trade secret theft.^[26]

• Judicial Best Practices Report: The legislation requires the Federal Judicial Center to “develop recommended best practices for (1) the seizure of information and media storing the information; and (2) the securing of the information and media once seized.”^[27]

DTSA takes effect upon enactment and will apply to “any misappropriation of a trade secret” that occurs “on or after the date of the enactment.”^[28] DTSA provides significant new remedies for trade secret theft or misappropriation. Trade secret owners should review their protection plans to ensure that they have the full protections and benefits of this new federal law.

^{[1] US House of Representatives, Defend Trade Secrets Act of 2016, Final Vote (Apr. 27, 2016).}

^{[2] US Senate, Defend Trade Secrets Act of 2016, Senate Roll Call Vote (Apr. 4, 2016).}

^{S. 1890 was introduced by Senator Orrin Hatch (R-UT) and Senator Chris Coons (D-DE). S. 1890, 114th Cong., 1st Sess. (2015). During the Senate Judiciary Committee mark-up hearing on January 28, 2016, the authors offered an amendment in the nature of a substitute, which was unanimously accepted. S. 1890, 114th Cong., 2d Sess. (2016).}

^{For further analysis of the trade secret reform legislation, see Statement of Mark Krotoski Submitted to the US Senate Judiciary Committee for the Hearing on Protecting Trade Secrets: The Impact of Trade Secret Theft on American Competitiveness and Potential Solutions to Remedy This Harm (Dec. 2, 2015).}

^{[3] Similar bipartisan legislation, was introduced in the US House of Representatives. H.R. 3326 was introduced by Congressman Doug Collins (R-GA) and Congressman Jerrold Nadler (D-NY). H.R. 3326, 114th Cong., 1st Sess. (2015).}

^{[4] Presentment Clause, US Const., Article I, Section 7, Clauses 2 and 3.}

^{[5] Statement Of Administration Policy, S. 1890 – Defend Trade Secrets Act of 2016 (Apr. 4, 2016).}

^{[6] For recent examples, see Trade Secret Examples Based on Recent Criminal and Civil Cases.}

^{[7] See, e.g., Economic Espionage Act, 18 U.S.C. § 1839(3) (defining trade secrets); see also Uniform Trade Secret Act § 1(4) (same).}

^{[8] For the UTSA, see Uniform Trade Secrets Act with 1985 Amendments. For UTSA jurisdictions, see Legislative Fact Sheet—Trade Secrets Act.}

^{[9] Fed. R. Civ. P. 45(b)(2) (“A subpoena may be served at any place within the United States”).}

^{[10] Pub. L. No. 104-294, 110 Stat. 3488 (Oct. 11, 1996) (codified as amended 18 U.S.C. §§ 1831–1839).}

^{[11] S. 1890, § 2 (proposed § 1836(b)(1)).}

^{[12] Id. (proposed § 1836(b)(2)).}

^{[13] S. 1890 (proposed § 1836(b)(2)(A)(i)).}

^{[14] Id. (proposed § 1836(b)(2)(E)).}

^{[15] Id. (proposed § 1836(b)(3)(A)(i)(I)).}

^{[16] Id. (proposed § 1836(b)(3)(A)(i)(II)).}

^{[17] Id. (proposed § 1836(d)).}

^{[18] Id. § 7 (proposed § 1833(b)); see also amendment as offered.}

^{[19] S. 1890, § 3 (proposed § 1835(b)).}

^{[20] Id. § 2 (proposed § 1836(b)(2)(D)(i)).}

^{[21] Id. (proposed § 1836(b)(2)(D)(ii)).}

^{[22] Id. (proposed § 1836(b)(2)(H)).}

^{[23] Id. § 3(a) (amending § 1832(b)).}

^{[24] Id. § 3(b).}

^{[25] 18 U.S.C. §§ 1962 (Prohibited activities). Under the RICO, criminal penalties are set forth in 18 U.S.C. § 1963, and civil remedies are provided in 18 U.S.C. § 1964.}

^{[26] S. 1890, § 4.}

^{[27] Id. § 6.}

^{[28] Id. § 2(e).}