USA Law and Practice Contributed by: Claudia Ray, Joseph Loy, Brandon R. Weber and Andrew (Keum Yong) Lee, Kirkland & Ellis LLP
the confidentiality of the trade secret, then there may be a risk that trade secret protection will be lost. 1.7 Independent Discovery Trade secret protection cannot be used against a party who independently discovered or reverse engineered the alleged trade secret (Insulet Corp v EOFlow, Co, 104 F.4th 873, 881 (Fed. Cir. 2024) (citing 18 USC Section 1839(6)(B))). In other words, trade secret misappropriation, unlike pat - ent infringement, is not a “ strict liability ” offence. Misappropriation would not lie, against an inde - pendent developer, in part because there was no acquisition from the trade secret owner (nor from another party with an obligation to the trade secret owner). Similarly, reverse engineering the alleged trade secret from a commercially available product would not be an “ improper means ” of acquiring the information under trade secret laws (although such activity could violate agreements, such as those imposed by “ shrink-wrap ” or “ click-wrap ” licences). Both independent development and reverse engineering suggest that the alleged trade secret is not difficult to properly acquire or duplicate, a factor often considered in evalu - ating whether trade secret protection is war - ranted. Independent development and reverse engineering can therefore be valuable defences to a defendant faced with allegations of trade secret misappropriation. Two parties could conceivably develop the same trade secret independently and without knowl - edge of the other’s development, and both par - ties would have independent causes of action against third parties for misappropriation. For the same reasons discussed in the foregoing, however, neither party would be able to suc -
cessfully recover against the other for trade secret misappropriation. 1.8 Computer Software and Technology Certain aspects of computer software and tech - nology, such as proprietary source code and internal software design and architecture mate - rials, may be protectable trade secrets under the DTSA and various state trade secret laws if the ordinary standards for trade secret protection are met. There are no specific protections that are unique to computer software and/or tech - nology. Aspects of software that are apparent to an end user, such as the software’s general functional - ity or user interface, are unlikely to receive trade secret protection unless the end user licence or other agreement imposes an obligation to keep this kind of information secret. The Computer Fraud and Abuse Act (CFAA) also establishes civil and criminal penalties for know - ingly or intentionally either accessing a protected computer (without authorisation) or exceeding the authorised level of access. 1.9 Duration of Protection for Trade Secrets Trade secrets may remain protected indefinitely, so long as the trade secret owner maintains the secrecy of the trade secret. Accidental or intentional public disclosure may terminate trade secret protection, but such considerations are generally fact-based inquiries. Controlled disclosure of a trade secret – eg, for licensing or limited disclosure to third-party vendors and employees for business purposes – generally does not nullify trade secret protec - tion. Owners of trade secrets should accompany any controlled disclosure of their trade secret
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