1136. Defenses

The EEA does not expressly provide for any defenses. However, the legislative history of the EEA suggests that traditional defenses available in a civil action for theft of trade secrets are equally applicable to a criminal violation. Specifically, the legislative history indicates that acquiring a trade secret through parallel development or reverse engineering is not illegal.

1. Parallel Development - The owner of a trade secret, unlike the holder of a patent, does not have an absolute monopoly on the information or data that comprises the trade secret. Other companies and individuals have the right to discover the elements of a trade secret through their own research and hard work. As the Supreme Court stated in Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 490-91 (1974):
   If something is to be discovered at all, very likely it will be discovered by more than one person. . . . Even were an inventor to keep his discovery completely to himself, something that neither the patent nor trade secret laws forbid, there is a high probability that it will be soon independently developed. If the invention, though still a trade secret, is put into public use, the competition is alerted to the existence of the inventor's solution to the problem and may be encouraged to make an extra effort to independently find the solution thus known to be possible.
2. Reverse Engineering - Similarly, a person can legally discover the elements of a trade secret by "reverse engineering," the practice of taking something apart to determine how it was made or manufactured. See, e.g., Kewanee Oil Co., 416 U.S. at 476 (the law does not protect the owner of a trade secret from "discovery by fair and honest means, such as independent invention, accidental disclosure, or by so-called reverse engineering."). The EEA does not expressly address when reverse engineering would be a valid defense; however, the legislative history suggests that "the important thing is to focus on whether the accused has committed one of the prohibited acts of this statute rather than whether he or she has reverse engineered. If someone has lawfully gained access to a trade secret and can replicate it without violating copyright, patent, or this law, then that form of `reverse engineering' should be fine." 142 Cong. Rec. S12201, S12212 (daily ed. Oct. 2, 1996).

Therefore, to avoid a successful claim by the defendant that he discovered the trade secret by reverse engineering, the means by which the defendant misappropriated the trade secret should be established. Further, a defendant cannot defeat a prosecution by claiming the trade secret "could have been discovered by reverse engineering." Telerate Sys. Inc. v. Caro, 689 F. Supp. 221, 232 (S.D.N.Y. 1988) ("the proper focus of inquiry is not whether an alleged trade secret can be deduced by reverse engineering but rather, whether improper means are required to access it.").

[cited in JM 9-59.100]