II 

112TH CONGRESS 

2D SESSION S. 3389 

To modify chapter 90 of title 18, United States Code, to provide Federal 

jurisdiction for theft of trade secrets. 

IN THE SENATE OF THE UNITED STATES 

JULY 17, 2012 

Mr. KOHL (for himself, Mr. COONS, and Mr. WHITEHOUSE) introduced the 

following bill; which was read twice and referred to the Committee on the 

Judiciary 

A BILL 

To modify chapter 90 of title 18, United States Code, to 

provide Federal jurisdiction for theft of trade secrets. 

1 Be it enacted by the Senate and House of Representa2 tives of the United States of America in Congress assembled, 

3 SECTION 1. SHORT TITLE. 

4 This Act may be cited as the ‘‘Protecting American 

5 Trade Secrets and Innovation Act of 2012’’. 

6 SEC. 2. FEDERAL JURISDICTION FOR THEFT OF TRADE SE7 CRETS. 

8 (a) IN GENERAL.—Section 1836 of title 18, United 

9 States Code, is amended to read as follows: 


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1 ‘‘§ 1836. Civil proceedings 

2 ‘‘(a) PRIVATE CIVIL ACTIONS.— 

3 ‘‘(1) IN GENERAL.—A person may bring a civil 

4 action under this subsection if the person is ag5 grieved by— 

6 ‘‘(A) a violation of section 1831(a) or 

7 1832(a); or 

8 ‘‘(B) a misappropriation of a trade secret 

9 that is related to or included in a product that 

10 is produced for or placed in interstate or for11 eign commerce. 

12 ‘‘(2) PLEADINGS.—A complaint filed in a civil 

13 action brought under this subsection shall— 

14 ‘‘(A) describe with specificity the reason15 able measures taken to protect the secrecy of 

16 the alleged trade secrets in dispute; and 

17 ‘‘(B) include a sworn representation by the 

18 party asserting the claim that the dispute in19 volves either substantial need for nationwide 

20 service of process or misappropriation of trade 

21 secrets from the United States to another coun22 try. 

23 ‘‘(3) CIVIL EX PARTE SEIZURE ORDER.— 

24 ‘‘(A) IN GENERAL.—In a civil action 

25 brought under this subsection, the court may, 

26 upon ex parte application and if the court finds 


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1 by clear and convincing evidence that issuing 

2 the order is necessary to prevent irreparable 

3 harm, issue an order providing for— 

4 ‘‘(i) the seizure of any property (in5 cluding computers) used or intended to be 

6 used, in any manner or part, to commit or 

7 facilitate the commission of the violation 

8 alleged in the civil action; and 

9 ‘‘(ii) the preservation of evidence in 

10 the civil action. 

11 ‘‘(B) SCOPE OF ORDERS.—An order issued 

12 under subparagraph (A) shall— 

13 ‘‘(i) authorize the retention of the 

14 seized property for a reasonably limited pe15 riod, not to exceed 72 hours under the ini16 tial order, which may be extended by the 

17 court after notice to the affected party and 

18 an opportunity to be heard; 

19 ‘‘(ii) require that any copies of seized 

20 property made by the requesting party be 

21 made at the expense of the requesting 

22 party; 

23 ‘‘(iii) require the requesting party to 

24 return the seized property to the party 

25 from which the property were seized at the 


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1 end of the period authorized under clause 

2 (i), including any extension; and 

3 ‘‘(iv) include an appropriate protective 

4 order with respect to discovery and use of 

5 any property that has been seized, which 

6 shall provide for appropriate procedures to 

7 ensure that confidential, private, propri8 etary, or privileged information contained 

9 in the seized property is not improperly 

10 disclosed or used. 

11 ‘‘(C) SEIZURES.—A party injured by a sei12 zure under an order under this paragraph— 

13 ‘‘(i) may bring a civil action against 

14 the applicant for the order; and 

15 ‘‘(ii) shall be entitled to recover appro16 priate relief, including— 

17 ‘‘(I) damages for lost profits, cost 

18 of materials, and loss of good will; 

19 ‘‘(II) if the seizure was sought in 

20 bad faith, punitive damages; and 

21 ‘‘(III) unless the court finds ex22 tenuating circumstances, to recover a 

23 reasonable attorney’s fee. 

24 ‘‘(4) REMEDIES.—In a civil action brought 

25 under this subsection, a court may— 


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1 ‘‘(A) issue— 

2 ‘‘(i) an order for appropriate injunc3 tive relief against any violation described 

4 in paragraph (1), including the actual or 

5 threatened misappropriation of trade se6 crets; 

7 ‘‘(ii) if determined appropriate by the 

8 court, an order requiring affirmative ac9 tions to be taken to protect a trade secret; 

10 and 

11 ‘‘(iii) if the court determines that it 

12 would be unreasonable to prohibit use of a 

13 trade secret, an order requiring payment of 

14 a reasonable royalty for any use of the 

15 trade secret; 

16 ‘‘(B) award— 

17 ‘‘(i) damages for actual loss caused by 

18 the misappropriation of a trade secret; and 

19 ‘‘(ii) damages for any unjust enrich20 ment caused by the misappropriation of 

21 the trade secret that is not addressed in 

22 computing damages for actual loss; 

23 ‘‘(C) if the trade secret described in para24 graph (1)(B) is willfully or maliciously mis25 appropriated, award exemplary damages in an 


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1 amount not more than the amount of the dam2 ages awarded under subparagraph (B); and 

3 ‘‘(D) if a claim of misappropriation is 

4 made in bad faith, a motion to terminate an in5 junction is made or opposed in bad faith, or a 

6 trade secret is willfully and maliciously mis7 appropriated, award reasonable attorney’s fees 

8 to the prevailing party. 

9 ‘‘(b) JURISDICTION.—The district courts of the 

10 United States shall have original jurisdiction of civil ac11 tions brought under this section. 

12 ‘‘(c) PERIOD OF LIMITATIONS.—A civil action under 

13 this section may not be commenced later than 3 years 

14 after the date on which the misappropriation is discovered 

15 or by the exercise of reasonable diligence should have been 

16 discovered. For purposes of this subsection, a continuing 

17 misappropriation constitutes a single claim of misappro18 priation.’’. 

19 (b) DEFINITIONS.—Section 1839 of title 18, United 

20 States Code, is amended— 

21 (1) in paragraph (3), by striking ‘‘and’’ at the 

22 end; 

23 (2) in paragraph (4), by striking the period at 

24 the end and inserting a semicolon; and 

25 (3) by adding at the end the following: 


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1 ‘‘(5) the term ‘misappropriation’ means— 

2 ‘‘(A) acquisition of a trade secret of an3 other by a person who knows or has reason to 

4 know that the trade secret was acquired by im5 proper means; or 

6 ‘‘(B) disclosure or use of a trade secret of 

7 another without express or implied consent by 

8 a person who— 

9 ‘‘(i) used improper means to acquire 

10 knowledge of the trade secret; 

11 ‘‘(ii) at the time of disclosure or use, 

12 knew or had reason to know that the 

13 knowledge of the trade secret was— 

14 ‘‘(I) derived from or through a 

15 person who had used improper means 

16 to acquire the trade secret; 

17 ‘‘(II) acquired under circum18 stances giving rise to a duty to main19 tain the secrecy of the trade secret or 

20 limit the use of the trade secret; or 

21 ‘‘(III) derived from or through a 

22 person who owed a duty to the person 

23 seeking relief to maintain the secrecy 

24 of the trade secret or limit the use of 

25 the trade secret; or 


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1 ‘‘(iii) before a material change of the 

2 position of the person, knew or had reason 

3 to know that— 

4 ‘‘(I) the trade secret was a trade 

5 secret; and 

6 ‘‘(II) knowledge of the trade se7 cret had been acquired by accident or 

8 mistake; and 

9 ‘‘(6) the term ‘improper means’— 

10 ‘‘(A) includes theft, bribery, misrepresenta11 tion, breach or inducement of a breach of a 

12 duty to maintain secrecy, or espionage through 

13 electronic or other means; and 

14 ‘‘(B) does not include reverse engineering 

15 or independent derivation.’’. 

16 (c) TECHNICAL AND CONFORMING AMENDMENT.— 

17 The table of sections for chapter 90 of title 18, United 

18 States Code, is amended by striking the item relating to 

19 section 1836 and inserting the following: 

‘‘1836. Civil proceedings.’’. 

20 (d) RULE OF CONSTRUCTION.—Nothing in the 

21 amendments made by this section shall be construed to 

22 modify the rule of construction under section 1838 of title 

23 18, United States Code, or to preempt any other provision 

24 of law. 

Æ 


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