Increasingly, the globalization of technology markets has complicated how businesses and individuals protect and enforce their intellectual property rights. While international laws generally protect rights in patents, copyrights, trade secrets and trademarks, the enforcement of such rights is complicated by unique requirements of how discovery functions within individual nations. For instance, transnational patent and trade secret litigation in the United States often involves parties who require evidence that is within the custody and control of both parties and non-parties located in any number of foreign jurisdictions. Yet such foreign states often employ significantly different discovery practices than what is permitted in the United States and may not even allow the parties to take depositions or demand specific forms of documentation. These problems are further complicated by the fact that how patents and trade secrets are enforced internationally requires an evaluation of the legal protections afforded such rights on a country-by-country basis. As patent and trade secret enforcement disputes themselves become increasingly international, such that it is no longer uncommon for parties to file multiple actions involving the same underlying intellectual property in myriad jurisdictions across the globe, the complexities of coordinated cross-border discovery and the implications of how to address related concerns such as protective orders, privacy requirements and equitable relief may seem overwhelming to many practitioners.
This drafting team, which uniquely will combine the collected wisdom of the Sedona Conference’s Working Groups 9, 10 and 12 (addressing best practices in both patent and trade secret litigation), will examine issues arising from this new reality, focusing its guidance on what are the best practices to ensure that the parties to United States patent and trade secret litigation with international components can ensure that they receive adequate discovery from all foreign sources so as to ensure that their claims and defenses are adequately presented to the courts addressing such disputes.