Benefits and Pitfalls of Referring Trade Secret Cases for Criminal Prosecution

Wednesday, May 29, 2013 (12:00 PM – 1:00 PM PST)

Scenario: Your client’s star employee has resigned and gone to work for the competition, taking your client’s trade secrets with him or her. You have reason to believe the ex-employee has improperly revealed those trade secrets to his or her new employer, who is now using that information to compete against your client. You know that under the federal Economic Espionage Act of 1996 and the Theft of Trade Secrets Clarification Act of 2012, such conduct can be prosecuted criminally. Do you refer your case to the federal government? Do you bring a civil action against your ex-employee? Or both?

The goal of the program is to educate participants about using the criminal justice system to protect intellectual property, in particular the risks and benefits of referring an intellectual property issue to the government for criminal investigation and prosecution.


Thomas J. Nolan, Senior Partner at Nolan, Armstrong & Barton, LLP, is a criminal defense attorney who has tried criminal trade secret cases to juries and judges for over twenty years. Mr. Nolan will discuss potential problems you should consider when making the decision whether to refer the case to the government.

David R. Callaway, Assistant United States Attorney, is a former chief of Economic Crimes and San Jose Branch Chief for the U.S. Attorney’s office. He now works with the Computer Hacking/Intellectual Property (CHIP) unit in San Jose. Mr. Callaway will discuss the advantages of bringing your case to the authorities and how the risks can be mitigated.

Kathleen F. Sherman, Litigation Associate at Berliner Cohen, specializing in intellectual property civil litigation and white collar criminal defense, will moderate the discussion.

For more information and to register, visit the event page at Santa Clara County Bar Association.

SCCBA Seminar & Conference Center
31 North Second Street, 4th Floor
San Jose, CA 95113