Calling the Cops: Enforcing Trade Secret Rights Through Criminal Prosecution

One remarkable aspect of the resolution announced last week in the long-running DuPont-Kolon trade secrets dispute is the transfer of $275 million to our client DuPont through the criminal restitution process. This highlights an option for corporate victims of trade secrets theft that is too often overlooked – initiation of criminal proceedings in parallel with civil litigation.  In fact, in some cases, a criminal trade secrets theft investigation and prosecution may eliminate the need for costly civil litigation entirely.

In the coming weeks, I’ll be publishing a series of posts on this blog outlining how corporate victims of trade secrets theft can take advantage of the government’s increased focus on criminal intellectual property enforcement to vindicate their intellectual property rights and obtain appropriate remedies.  Specifically, I’ll be discussing:

• How to initiate a government investigation, including determining whether a case is appropriate for referral to law enforcement, the pros and cons of initiating a criminal investigation, when to contact law enforcement, and appropriate points of initial contact within the government.
• How to manage a government investigation and prosecution, including the contours of a victim’s relationship with the government, managing interactions with agents and prosecutors within that framework, and strategies to attain the victim’s goals through the criminal justice process.
• How to strategize, anticipate, and manage the complex dynamics of parallel civil and criminal cases, including dealing with stays, witness issues, protective orders, remedies, and settlement.

I hope that in discussing these topics I can shed some light on this unique but critical area of trade secrets enforcement that is often a mystery to, or overlooked by, civil practitioners and in-house counsel — with a few object lessons from the DuPont-Kolon matter along the way.