Intellectual Property Rights Protection

The Defend Trade Secrets Act: What Every Outside and In-House Counsel Needs to Know Now


What's all the fuss surrounding the new Defend Trade Secrets Act?  An esteemed panel discusses what you need to know about the DTSA and why you need to know it. They also provide an in-depth look at unique issues surrounding the Act and provide necessary steps to protect those all-important trade secrets.


I. Introductions
    A. Panel Introductions
    B. The New Trade Secrets Act
        1. What's All the Fuss About?
        2. Asserting Patent Rights Isn't What It Used to Be
        3. Why the Defend the Trade Secrets Act?
        4. Opposition to the Act
    C. Unique Issues Around the DTSA
        1. Major Differences from the Uniform Trade Secrets Act
        2. The Differences in Injunctive Relief: DTSA v. UTSA
        3. The Ex Parte Seizure Requirement
        4. The Requirements in the Application
    D. Reasonable Steps to Protect Trade Secrets
        1. Increased Challenge to Navigate Security Risks
        2. The Current Threat Environment
        3. Implementing Good Practices
    E. Panel and Audience Discussion
        1. Protection of Trade Secrets - Three Reasons
        2. Pleading Requirements
        3. Complaints Filed and Ex Parte Seizure
        4. How to Balance Productivity vs. Security Measures
        5. Not Much Case Law Guidance
        6. Extraterritorial Reach

Content Provided

The American Intellectual Property Law Association (AIPLA) is a national bar association constituted primarily of lawyers in private and corporate practice, in government service, and in the academic community, with approximately 13,500 members. AIPLA represents a wide and diverse spectrum of individuals, companies and institutions involved directly or indirectly in the practice of patent, trademark, copyright, and unfair competition law, as well as other fields of law affecting intellectual property. Our members represent both owners and users of intellectual property.

AIPLA was formed in 1897 to maintain a high standard of professional ethics, to aid in the improvement in laws relating to intellectual property and in their proper interpretation by the courts, and to provide legal education to the public and to its members on intellectual property issues.

AIPLA is governed by a Board of Directors and has a staff of 25, headed by an Executive Director, located in Arlington, Virginia. AIPLA has more than 50 administrative and substantive committees which provide education to their members and formulate proposed positions for the Board of Directors to consider adopting as Association policy.

AIPLA is also actively involved in shaping US intellectual property policy through its work on legislation, federal regulations, and intellectual property cases in the US courts. Internationally, AIPLA has spearheaded a worldwide campaign to reduce the costs of procurement and enforcement of patents and trademarks, regularly participates in meetings of the Word Intellectual Property Organization, and maintains close relations with foreign IP officials and practitioners.

To qualify for membership, applicants must be members in good standing of the Bar of a court of record of the United States or any State. Foreign affiliate members must be able to practice in a court of general jurisdiction in their countries, or registered to practice before the Patent or Trademark Office in their country of citizenship or practice, to be considered for membership. AIPLA also has student affiliate memberships available for those regularly enrolled in a law school approved by the Association of American Law Schools and affiliate membership is available to patent agents who are registered with the USPTO. Approximately 63% of the regular members are in private practice, 33% in corporate practice, with the remainder in the government or academia. See our membership application for more information.

AIPLA conducts three regularly scheduled conferences a year, mid-winter, spring, and fall, at which the Association offers educational seminars on the latest developments in intellectual property law. In addition, AIPLA conducts several stand-alone seminars on specialized areas of intellectual property law throughout the year around the country, as well as online educational programs.

The Association produces a number of informative publications including the AIPLA Quarterly Journal (a scholarly law journal published four times a year), the AIPLA Bulletin (an overview of AIPLA meetings published electronically three times a year, and meeting papers from the regularly scheduled conferences and nationwide seminars. The Association also provides its members online access to a membership directory. Finally, AIPLA biennially publishes the Report of the Economic Survey, providing a significant benchmarking tool for compensation and charges in the intellectual property law field.

Speakers / Authors:

Photo of Pamela Passman

Pamela Passman

Pamela Passman is President and CEO of the Center for Responsible Enterprise and Trade ( Prior to founding CREATe in October 2011, Ms. Passman was the Corporate Vice President and Deputy General Counsel, Global Corporate and Regulatory Affairs, Microsoft Corporation. From 2002, Ms. Passman led Microsoft’s regulatory compliance work across a range of issues, including privacy, security, law enforcement, telecommunications and other issues related to cloud computing. She worked closely with business leaders and research and development teams to advance Microsoft’s businesses in China and other emerging markets.

Ms. Passman first joined Microsoft in 1996 and until 2002, led the Legal and Corporate Affairs organization in Asia, based in Tokyo, with a focus on Japan, Korea and the People’s Republic of China. Prior to joining Microsoft, Ms. Passman practiced law with Covington & Burling in Washington, D.C. and Nagashima & Ohno in Tokyo, Japan.

Ms. Passman serves on the Strategic Advisory Board of Ethisphere Institute, a private company that is the global leader in defining and advancing the standards of ethical business practices. She currently serves as a Trustee of Lafayette College and on the Boards of the National Bureau of Asian Research (NBR) and Kids in Need of Defense (KIND). She is also a member of the Council on Foreign Relations and serves on its Nominating and Governance Committee and has served on its Independent Task Force on U.S. Trade and Investment Policy (2010-2011).

Ms. Passman was recognized by Security Magazine as one of 2014 Most Influential People in Security.

Ms. Passman received her J.D. from the University of Virginia School of Law in 1987, and her B.A. from Lafayette College.

Photo of James Pooley

James Pooley

James Pooley, a distinguished member of the IP Hall of Fame, is a Senior Counsel in Orrick's Silicon Valley office. He is a highly sounght-after advisor and trial lawyer in courts and in private arbitration.

Mr. Pooley combines over 35 years as a successful Silicon Valley trial lawyer with deep knowledge of patents and trade secrets, proven leadership of national organizations and five years as a diplomat and manager of the international patent system (PCT). With the analytical and communication skills of an attorney, executive, diplomat, teacher and published author, Jim provides a unique perspective and valuable resource for companies dealing with the challenges of deploying IP in complex global markets while facing unprecedented risks to information security.

Mr. Pooley has been a senior partner at several large firms, where he handled hundreds of trade secret cases and was heavily involved in patent litigation. His successful jury defense of Adobe Systems as lead trial counsel in the country’s first major software patent infringement case tried to a jury was chosen by the National Law Journal as the only IP case among its Top Defense Verdicts of 1997. Adobe won with findings of non-infringement and invalidity of the patents asserted against Photoshop. In 2003, California Lawyer magazine named Mr. Pooley Lawyer of the Year in recognition of a $90 million technology copyright settlement for ESS Technology of Fremont in litigation with MediaTek Inc. of Taiwan.

Mr. Pooley has been a driving force behind the newly adopted Defend Trade Secrets Act. On December 2, 2015, the U.S. Senate Committee on the Judiciary invited him to testify as an expert on trade secret law and litigation as the committee weighed the proposed legislation, which created a federal civil claim for misappropriation of a company’s know-how. In 2009, the White House appointed him Deputy Director General of the World Intellectual Property Organization, an agency of the United Nations, where he was responsible for the international patent system.

Mr. Pooley received his J.D. from Columbia Law School in 1972, where he was a Harlan Fiske Stone Scholar, and his B.A., cum laude, from Lafayette College in 1970.

Photo of Peter J. Toren

Peter J. Toren

Peter J. Toren is with the law firm of Weisbrod Matteis & Copley PLLC where he has successfully represented clients for over 30 years in intellectual property and commercial litigation matters throughout the United States at both the trial and appellate levels. He was selected by the National Law Journal as Top 50 Intellectual Property Trail Blazer and Pioneer, 2014. He is a co-author of the recently published Defend Trade Secrets Act of 2016 Handbook (Walters Kluwer).

Mr. Toren’s practice has a strong focus on patent, trademark, copyright, and trade secret cases as well as other complex commercial disputes. His representations often involve complex technologies, including computer software and hardware, light emitting diodes, bio-technology, semiconductor manufacturing and fabrication, optics and medical devices as well as business methods. He also has successfully obtained and defended motions for preliminary injunctions and summary judgment motions involving the Patent Act, Copyright Act, Lanham Act, Digital Millennium Copyright Act and Computer Fraud and Abuse Act.

He has argued numerous times before the Second, Fifth, Ninth and Federal Circuits involving patent, copyright, and trademark law. Mr. Toren has also handled a number of internal investigations involving the Economic Espionage Act as well as other federal criminal laws on behalf of large corporations.

Mr. Toren regularly represents clients in negotiations concerning complex intellectual property licensing and technology transfer agreements.

Mr. Toren is the author of Intellectual Property & Computer Crimes (Law Journal Press), which has been updated twice a year since first being published in 2003, and has been described as a “must have desk reference.” He is a winner of the 2010 Burton Award for excellence in legal writing for The Intersection of Intellectual Property and Bankruptcy Law (BNA). Mr. Toren is also the author of over 100 legal articles covering a wide range of topics and has given over 100 speeches and talks on a variety of IP subjects to groups both inside and outside the United States.

Mr. Toren served as a federal prosecutor with the Computer Crime & Intellectual Property Section of the United States Department of Justice where he handled a number of high profile cases involving criminal copyright, trademark and trade secret matters, including one of the first cases ever prosecuted under the Economic Espionage Act.

Mr. Toren received his J.D., cum laude, from the University of San Francisco School of Law, in 1985, his M.I.A. from Columbia University in 1988, and his B.S. from Bowdoin College in 1981.


Price (USD)

Standard Rate: $149.00
Subscribers: FREE
Pillsbury U Online: $149.00
Metro State Univ: $149.00


Course Code : 772544

Release Date : 12/29/2016

Length : 1hr 11min
Recorded Date : 10/28/2016

Format Type : eLearning
Mobile Compatible

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