Best Practices for Trade Secret Protection in the Wake of Recent Federal Law Developments

Palo Alto Presentation

15 May 2012 11:30 a.m. - 01:00 p.m.

Crowne Plaza
Cabana Hotel
4290 El Camino Real
Palo Alto, CA 94306
Blair Forde
(858) 720-7974

Does your company have operations outside of the United States?  Has your company been frustrated attempting to remedy misappropriation of trade secrets that occurs overseas, where the misappropriator has insufficient contacts to be sued in the U.S.?  Has your company had difficulty deciding between patent or trade secret protection for valuable confidential information?  Recent federal law developments have far-reaching implications for these trade secret issues, and emphasize the continued importance of trade secrets as part of the IP strategy of any business.  This seminar will discuss best practices for protecting trade secrets in light of these developments. 

  1. The Federal Circuit’s 2011 decision in TianRui Group v. ITC allows U.S. trade secret owners to file proceedings under Section 337 of the Tariff Act to ban importation of products manufactured overseas using trade secrets developed in the U.S. and misappropriated in a foreign country.  This development provides U.S. trade secret owners with a significant new tool to remedy misappropriation that occurs overseas, even when the misappropriator may not be subject to the personal jurisdiction of U.S. courts.

  2. The Leahy-Smith America Invents Act of 2011 reformed U.S. patent law in numerous ways, including expansion of the “prior user rights” defense to include patents of all kinds.  This defense had been previously limited to business method patents.  The “prior user rights” defense protects trade secret owners who used their secrets for at least one year prior to the issuance of patents from being sued for patent infringement under certain circumstances.  And in Mayo Collaborative Services v. Prometheus Laboratories, Inc., the U.S. Supreme Court recently held that a patent with respect to optimizing therapeutic effectiveness for treatment of a disease was not eligible for patent protection.  The combination of these two patent law developments may cause more owners of valuable intellectual property to seriously consider trade secret protection.


  • Karl Kramer, Partner, Morrison & Foerster LLP
  • Colette Verkuil, Senior Associate, Morrison & Foerster LLP


Morrison & Foerster LLP (Provider #2183) certifies that this activity has been approved for MCLE credit by the State Bar of California in the amount of 1 hour.




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