1. Trade Secrets 2018: International
David Chun Partner,
Ropes & Gray LLP
Mark D. Selwyn Partner, WilmerHale
Kamrin MacKnight
Chief Patent Counsel and Senior Director of Intellectual Property,
Codexis Inc.
Ronald Cheng
Partner, O’Melveny & Myers LLP
Moderator
October 30, 2018

2. Agenda Countries and Regions: Risks and Enforcement
Foreign Law Protecting Trade Secrets
Considerations for Cross-Border Disputes (including language and culture, conflicts of laws)
Responding to International Trade Secret Theft Situations
Protections Against International Risk

3. Foreign Law Protecting Trade Secrets
How active is criminal enforcement
What legal and practical difficulties exist
Are foreign courts capable of handling these cases
Is there local protectionism
Enforcement Trends
How effective are damages
What form of injunctive relief is available?
Remedies

4. Countries and Regions: Risks and Enforcement
European Union
Trade Secrets Directive
Asia
Korea
Japan
China
Risks: Made in China 2025, talent recruitment programs
Enforcement: Civil / criminal
U.S. Efforts to Enhance Overseas Enforcement
Budapest Convention on Cybercrime
IPLEC Program (Asia, Europe, South America, and Africa)

5. EU Trade Secrets Directive
What It Is
How It Compares With The U.S. Defense of Trade Secrets Act (DTSA)
What It Means For You

6. EU Trade Secrets Directive: Background
Passed by the European Union on June 8, 2016
Goal to provide minimum levels of protection for protecting trade secrets (undisclosed know-how and business information) across all EU Member States
Historically, great variability in definition of trade secret and scope of trade secret protection across EU Member States
Required to be implemented in national laws of EU Member States by June 9, 2018

7. EU Trade Secrets Directive: Key Provisions
Article 2(1) defines a trade secret
Three requirements:
“it is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question”
“it has commercial value because it is secret”
“it has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret”

8. EU Trade Secrets Directive: Key Substantive Provisions
Article 3 addresses when the acquisition, use, and disclosure of a trade secret is considered lawful. Article 4 addresses the unauthorized acquisition of a trade secret (Article 4(2)), the unauthorized use or disclosure of a trade secret (Article 4(3)), and the indirect acquisition of a trade secret (Article 4(4)). Article 5 addresses exceptions to the trade secret proscriptions of Article 4.

9. EU Trade Secrets Directive: Key Procedural Provisions
Article 8 stipulates that the statute of limitations period shall not exceed six years. Article 9 mandates procedures to preserve the confidentiality in trade secrets litigation of trade secrets and documents recording them.

10. EU Trade Secrets Directive: Key Remedy Provisions
Articles 10 and 11 set forth provisional and precautionary measures.
Include preliminary injunctions and seizures of the suspected infringing goods.
Articles 12 through 15 address remedies, including final injunctions, corrective measures, and damages.

11. Similarity of EU Trade Secrets Directive and DTSA
Substantial overlap between EU Trade Secrets Directive and DTSA on major trade secrets topics
Definition of trade secret
Definition of misappropriation / unlawful acquisition, use, disclosure
Reverse engineering

12. Areas of Divergence Between EU Trade Secrets Directive and DTSA
Protections to whistleblowers
Protections for exercising right to freedom of expression and information
Seizure of goods as provisional remedy

13. “Reasonable Steps” To Keep Information Secret
New requirement under EU law
Objective inquiry
Owner of trade secrets bears burden of proof

14. Considerations for Cross-Border Disputes
Criminal disputes
Service (In re Pangang Group Co., No (9th Cir. Aug, 22, 2018)
Civil enforcement. Transnational litigation may implicate the following issues:
Language issues
Discovery and privilege
Data security regulation
Local law/choice of law
Internal investigations
Confidentiality
Forensic investigation / cellphones and devices

15. Responding to International Trade Secret Theft: Hypothetical Situations
Situation 1. Law enforcement advises the company on a confidential basis that an employee is the target of a trade secrets investigation.
Situation 2. The company receives information through a whistleblower hotline that an employee has been downloading technical information regarding a key technology under development and is planning to leave the company to start up a new enterprise overseas.

16. Protections against International Risk
Third-party collaborators
Employees
Employees departing for competitors
External threats (including data security)
Sales of assets

17. Thank You / Questions