The Time and Scope of Navigating the Disclosure of Trade Secrets During Discovery
January 24, 2022
Trade Secrets, by their very nature, are intended to be kept secret and derive value from being undisclosed. However, during the litigation of a trade secret misappropriation case or severance from an employee with whom such secrets were shared, the secret’s owner will need to disclose its nature to allege whatever misappropriation occurred. The timing of that disclosure and the extent to which such information needs to be revealed is the topic of a new article from Jones Day, “Navigating Trade Secret Identification During Discovery: Timing & Scope.”
Most trade secret cases are brought at the state level, under the jurisdiction’s specific state version of the Uniform Trade Secrets Act (UTSA) of 1979. Federal cases fall under the Defend Trade Secrets Act (DTSA) of 2016, but because the federal law does not preempt the UTSA, such claims are often brought under both the UTSA and the DTSA. State and federal laws are silent on procedural requirements for the timing and disclosure of such information, leaving questions about how trade secrets should be disclosed during discovery and at what point in the discovery process they should be addressed.
Often, the decision is left to the judge and can vary even from other trade secret cases within the same jurisdiction. Some judges will require disclosure before formal discovery has begun, while others will permit disclosure at any point during the discovery phase of trial. The required scope of the disclosure is another matter left up to the jurisdiction and individual judge. While some jurisdictions provide a codified standard of what constitutes sufficient scope, others have not adopted such a definition.
Ultimately, it is important to consider the requirements for disclosure of trade secrets in the jurisdiction in which you will be filing. Plaintiffs with questions about misappropriated information may choose to file in a jurisdiction that does not require disclosure until later in discovery, while defendants should research jurisdiction-specific requirements, so they know when and how hard to push for disclosure of secret information. Despite the lack of a unified approach for dealing with trade secret disclosure during trial, there has been a trend toward disclosure earlier in fact discovery. Parties should be aware of the tendencies for disclosure or requirements in their jurisdiction before filing, and be prepared to disclose trade secret information in the most favorable light for their position in litigation.
To read the complete article from Jones Day, written by Nathaniel Garrett, Andrea Weiss Jeffries, Michael Oblon, Cary Sullivan, and Ryan Walsh, click here.
To read how André Castaybert PLLC can assist you with trade secret matters, click here.
