I'm delighted to announce that, effective July 1, I have  joined the global law firm of Orrick, Herrington & Sutcliffe.

I could not be more excited to be part of Orrick's distinguished intellectual property team.

I look forward to continuing my IP practice and publishing my newsletter on trade secrets  from the Orrick platform. My new contact information is shown on the v-card link below.


The new Defend Trade Secrets Act for the first time lets you file your case in federal court. But just because you can do it doesn't necessarily mean you should. Federal court provides a lot of advantages for certain kinds of disputes. But there can be a downside.
The easy decision is in a case that the DTSA was designed for, where some of the actors are in other states or countries. Federal courts give you nationwide service of process and uniform rules of procedure that can streamline litigation. Federal judges, with their experience handling cross-border cases, are better suited to resolving complex issues of personal jurisdiction. And if you find out about a threatened theft of valuable data before it happens, the new ex parte seizure provision of the DTSA can give you a powerful remedy.
But federal court is not for everyone. Its judges are "single-assignment," meaning that they have a case from beginning to end, and therefore also have a motive to end it early if it lacks substance. As a result, federal judges (who by the way are not getting any additional resources from Congress along with their new trade secret jurisdiction) often demand more specificity in pleadings and in trade secret definitions, which can end up looking like patent claims. State courts, in contrast, usually run on a "departmental" system, where early issues are handled by specialist judges, giving close cases a better chance to squeak through to trial, and giving plaintiffs more leeway in describing the subject matter of their claims.
Federal judges may be more inclined to transfer venue. And when it comes to substantive issues, the trade secret plaintiff's requirement to demonstrate its "reasonable efforts" to protect its data may get a more skeptical eye. Once a federal judge  granted a defense summary judgment because the "confidential" legend on plaintiff's documents was not in a big enough font! So even after the DTSA, trade secret owners need to have an open mind about their strategy in deciding whether, and where, to litigate. For more information, including important considerations for clients, see my white paper "So You Want To Sue For Trade Secret Theft?" here.

Recent Updates

Defend Trade Secrets Act Signed by President Obama
The DTSA was signed into law on May 11, 2016. This means that companies need to review their confidentiality agreements with employees, and individual contractors and consultants, to ensure that any agreements signed or updated after  May 11  include a notice of the DTSA whistleblower provisions. And any disputes involving misappropriation that occurs after  May 11  may be candidates for DTSA filings in federal court.

EU Trade Secret Directive Enters Into Force
On  July 6, 2016 the EU Trade Secret Directive becomes operative, which means that the 28 Member States of the European Union have two years to bring their national laws into alignment with the minimum standards of the Directive. (The UK arguably already meets those standards, and so the recent "Brexit" vote will not have any meaningful effect on the availability of remedies in that country.) To see my article comparing the Directive with the DTSA, click here.

Recent Articles

(April 12, 2016, The Recorder)

(April 8, 2016, The Recorder)

"Trade Secret Bill Resolves 'Inevitable Disclosure' Controversy"
(Feb. 17 2016, Law360) 

"New Federal Trade Secret Law Would Protect Whistleblowers"
 (Feb. 5 2016, Law.com)

Forbes recommends my book  
Find all of my recent articles here .

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The Billion-Dollar Trade Secret Verdict
James Pooley | james@pooley.com | www.pooley.com