USA Law and Practice Contributed by: Claudia Ray, Joseph Loy, Josh Berlowitz and Andrew (Keum Yong) Lee, Kirkland & Ellis LLP
cannot be publicly disclosed, patents can only be obtained by applying to the United States Patent and Trademark Office. During that process, the pat - ent application and granted patent will be disclosed publicly. Once the individual’s patent application has been granted, the patent provides a 20-year monopoly right from the filing date of the earliest priority application, after which the patented invention enters the public domain and may be used by anyone. Because of this mandatory disclosure, protecting information as a trade secret may be preferred to protecting it via patent. One disadvantage, however, is that although they can theoretically be protected indefinitely, trade secrets – unlike patents – can be independently discovered or reverse engineered, after which there may be no further protection. 1.12 Overlapping IP Rights In the USA, patent, trade mark, copyright and trade secret are separate and independent forms of legal protection for intellectual property. Plaintiffs can, and do, frequently assert claims under more than one of these legal protections simultaneously, based on the same or related conduct. An individual cannot seek both patent and trade secret protection for the same information. They may, however, obtain overlapping rights in a single product, such as protecting the design of the product with a patent while protecting the composition of the product as a trade secret. Copyright and trade secret laws may overlap, espe - cially in the computer software field since computer software may receive protection from both. Processes implemented via software may also receive patent protection, though this has been more heavily scruti -
tition, breach of fiduciary duty, aiding and abetting a breach of fiduciary duty or unjust enrichment. That said, the Uniform Trade Secret Act and many state trade secret laws pre-empt common law and statutory claims to the extent they are based on the same facts and/or underlying conduct as the trade secret claims (see UTSA Section 7). 1.14 Criminal Liability Responsibility for enforcing criminal laws directed to trade secret theft and related activity rests with pros - ecutors at both the federal and state levels. While trade secret owners cannot pursue criminal claims as of right, they should consider whether to refer sus - pected or known trade secret theft to the Department of Justice or a state agency for investigation. The fed - eral Economic Espionage Act (EEA) imposes criminal liability, including substantial fines and imprisonment, for intentional or knowing theft of trade secrets. As with many federal criminal statutes, attempts to com - mit trade secret misappropriation as well as conspir - ing with others in furtherance of stealing trade secrets are themselves criminal activities, even if the theft is not ultimately successful. Fines for organisations that commit an offence under the EEA can reach up to three times the value of the stolen trade secrets to the organisation, including avoided R&D expenses. Defendants may avail themselves of defences unique to trade secret law. For example, the DTSA includes a “whistle-blower immunity” provision that shields a person from criminal liability under trade secret laws for disclosing a trade secret in confidence to a govern - ment official or an attorney solely for the purpose of reporting or investigating a suspected violation of law. Separately, the CFAA establishes criminal penalties for knowingly or intentionally either accessing a pro - tected computer (without authorisation) or exceed - ing an authorised level of access. Penalties include fines and imprisonment, the severity of which may be enhanced if the offence is committed for commercial
nised by courts in recent years. 1.13 Other Legal Theories
In addition to federal or state trade secret claims, plaintiffs should consider whether other common law or statutory claims may apply to the conduct at issue, including, for example, breach of contract, tortious interference with contractual relations, unfair compe -
advantage or financial gain. 1.15 Extraterritoriality
The DTSA appears to carry over the earlier-enacted EEA’s applicability to conduct outside the USA under
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