[Congressional Bills 112th Congress]
[From the U.S. Government Publishing Office]
[S. 3389 Introduced in Senate (IS)]

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.

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

SECTION 1. SHORT TITLE.

    This Act may be cited as the ``Protecting American Trade Secrets 
and Innovation Act of 2012''.

SEC. 2. FEDERAL JURISDICTION FOR THEFT OF TRADE SECRETS.

    (a) In General.--Section 1836 of title 18, United States Code, is 
amended to read as follows:
``Sec. 1836. Civil proceedings
    ``(a) Private Civil Actions.--
            ``(1) In general.--A person may bring a civil action under 
        this subsection if the person is aggrieved by--
                    ``(A) a violation of section 1831(a) or 1832(a); or
                    ``(B) a misappropriation of a trade secret that is 
                related to or included in a product that is produced 
                for or placed in interstate or foreign commerce.
            ``(2) Pleadings.--A complaint filed in a civil action 
        brought under this subsection shall--
                    ``(A) describe with specificity the reasonable 
                measures taken to protect the secrecy of the alleged 
                trade secrets in dispute; and
                    ``(B) include a sworn representation by the party 
                asserting the claim that the dispute involves either 
                substantial need for nationwide service of process or 
                misappropriation of trade secrets from the United 
                States to another country.
            ``(3) Civil ex parte seizure order.--
                    ``(A) In general.--In a civil action brought under 
                this subsection, the court may, upon ex parte 
                application and if the court finds by clear and 
                convincing evidence that issuing the order is necessary 
                to prevent irreparable harm, issue an order providing 
                for--
                            ``(i) the seizure of any property 
                        (including computers) used or intended to be 
                        used, in any manner or part, to commit or 
                        facilitate the commission of the violation 
                        alleged in the civil action; and
                            ``(ii) the preservation of evidence in the 
                        civil action.
                    ``(B) Scope of orders.--An order issued under 
                subparagraph (A) shall--
                            ``(i) authorize the retention of the seized 
                        property for a reasonably limited period, not 
                        to exceed 72 hours under the initial order, 
                        which may be extended by the court after notice 
                        to the affected party and an opportunity to be 
                        heard;
                            ``(ii) require that any copies of seized 
                        property made by the requesting party be made 
                        at the expense of the requesting party;
                            ``(iii) require the requesting party to 
                        return the seized property to the party from 
                        which the property were seized at the end of 
                        the period authorized under clause (i), 
                        including any extension; and
                            ``(iv) include an appropriate protective 
                        order with respect to discovery and use of any 
                        property that has been seized, which shall 
                        provide for appropriate procedures to ensure 
                        that confidential, private, proprietary, or 
                        privileged information contained in the seized 
                        property is not improperly disclosed or used.
                    ``(C) Seizures.--A party injured by a seizure under 
                an order under this paragraph--
                            ``(i) may bring a civil action against the 
                        applicant for the order; and
                            ``(ii) shall be entitled to recover 
                        appropriate relief, including--
                                    ``(I) damages for lost profits, 
                                cost of materials, and loss of good 
                                will;
                                    ``(II) if the seizure was sought in 
                                bad faith, punitive damages; and
                                    ``(III) unless the court finds 
                                extenuating circumstances, to recover a 
                                reasonable attorney's fee.
            ``(4) Remedies.--In a civil action brought under this 
        subsection, a court may--
                    ``(A) issue--
                            ``(i) an order for appropriate injunctive 
                        relief against any violation described in 
                        paragraph (1), including the actual or 
                        threatened misappropriation of trade secrets;
                            ``(ii) if determined appropriate by the 
                        court, an order requiring affirmative actions 
                        to be taken to protect a trade secret; and
                            ``(iii) if the court determines that it 
                        would be unreasonable to prohibit use of a 
                        trade secret, an order requiring payment of a 
                        reasonable royalty for any use of the trade 
                        secret;
                    ``(B) award--
                            ``(i) damages for actual loss caused by the 
                        misappropriation of a trade secret; and
                            ``(ii) damages for any unjust enrichment 
                        caused by the misappropriation of the trade 
                        secret that is not addressed in computing 
                        damages for actual loss;
                    ``(C) if the trade secret described in paragraph 
                (1)(B) is willfully or maliciously misappropriated, 
                award exemplary damages in an amount not more than the 
                amount of the damages awarded under subparagraph (B); 
                and
                    ``(D) if a claim of misappropriation is made in bad 
                faith, a motion to terminate an injunction is made or 
                opposed in bad faith, or a trade secret is willfully 
                and maliciously misappropriated, award reasonable 
                attorney's fees to the prevailing party.
    ``(b) Jurisdiction.--The district courts of the United States shall 
have original jurisdiction of civil actions brought under this section.
    ``(c) Period of Limitations.--A civil action under this section may 
not be commenced later than 3 years after the date on which the 
misappropriation is discovered or by the exercise of reasonable 
diligence should have been discovered. For purposes of this subsection, 
a continuing misappropriation constitutes a single claim of 
misappropriation.''.
    (b) Definitions.--Section 1839 of title 18, United States Code, is 
amended--
            (1) in paragraph (3), by striking ``and'' at the end;
            (2) in paragraph (4), by striking the period at the end and 
        inserting a semicolon; and
            (3) by adding at the end the following:
            ``(5) the term `misappropriation' means--
                    ``(A) acquisition of a trade secret of another by a 
                person who knows or has reason to know that the trade 
                secret was acquired by improper means; or
                    ``(B) disclosure or use of a trade secret of 
                another without express or implied consent by a person 
                who--
                            ``(i) used improper means to acquire 
                        knowledge of the trade secret;
                            ``(ii) at the time of disclosure or use, 
                        knew or had reason to know that the knowledge 
                        of the trade secret was--
                                    ``(I) derived from or through a 
                                person who had used improper means to 
                                acquire the trade secret;
                                    ``(II) acquired under circumstances 
                                giving rise to a duty to maintain the 
                                secrecy of the trade secret or limit 
                                the use of the trade secret; or
                                    ``(III) derived from or through a 
                                person who owed a duty to the person 
                                seeking relief to maintain the secrecy 
                                of the trade secret or limit the use of 
                                the trade secret; or
                            ``(iii) before a material change of the 
                        position of the person, knew or had reason to 
                        know that--
                                    ``(I) the trade secret was a trade 
                                secret; and
                                    ``(II) knowledge of the trade 
                                secret had been acquired by accident or 
                                mistake; and
            ``(6) the term `improper means'--
                    ``(A) includes theft, bribery, misrepresentation, 
                breach or inducement of a breach of a duty to maintain 
                secrecy, or espionage through electronic or other 
                means; and
                    ``(B) does not include reverse engineering or 
                independent derivation.''.
    (c) Technical and Conforming Amendment.--The table of sections for 
chapter 90 of title 18, United States Code, is amended by striking the 
item relating to section 1836 and inserting the following:

``1836. Civil proceedings.''.
    (d) Rule of Construction.--Nothing in the amendments made by this 
section shall be construed to modify the rule of construction under 
section 1838 of title 18, United States Code, or to preempt any other 
provision of law.
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