With an ever increasing number of United States ("U.S.") companies conducting business abroad or conducting business with foreign entities there is more need than ever for the U.S. companies to consider how they can protect their intellectual property assets. The Federal Circuit‘s recent TianRui Grp.Co. v. Int’l Trade Comm’n and Amsted Indus. decision highlights the potential of section 337 of the U.S. Patent Act as a tool to prevent the exploitation of misappropriated trade secrets embodied in products that are imported into the United States. This article explores the potential impact of the TianRui decision on business practices abroad, particularly on companies doing business with Chinese corporations, and whether the Federal Circuit‘s decision can be used as a conduit for the U.S. to police foreign business practices. It also examines complex, international choice of law issues in situations trade secrets are misappropriated outside the United States. Finally, it examines whether section 337 really is an effective tool in preventing the misappropriation of U.S. trade secrets, ultimately concluding that while section 337 can prevent the exploitation of a misappropriated trade secret asset in the United States, it is powerless to prevent the exploitation of the trade secret abroad and ultimately the loss of the trade secret both abroad and in the United States.
Steven E. Feldman & Sherry L. Rollo, Extraterritorial Protection of Trade Secret Rights in China: Do Section 337 Actions at the ITC Really Prevent Trade Secret Theft Abroad?, 11 J. Marshall Rev. Intell. Prop. L. 523 (2012)