Holger A. Kastler, Alistair Maughan, Wolfgang Schönig, and Bryan Wilson
Trade Secrets, Litigation + Dispute Resolution | Europe, Patent Litigation, and Intellectual Property Litigation
A harmonized trade secrets protection regime is coming to Europe and the U.S. Until now, the approach to trade secrets across Europe has been fragmented, with some countries having specific trade secrets legislation and others relying on unfair competition, tort, or contract law. Trade secret protection in the U.S. has been somewhat less fragmented, as almost every state (New York and Massachusetts being notable exceptions) has adopted some version of the Uniform Trade Secrets Act (“Uniform Act”). On May 11, 2016, President Obama signed into law the Defend Trade Secrets Act (“US DTSA”), which creates a federal cause of action with substantive elements that are very similar to the Uniform Act. For practical considerations regarding the US DTSA, see our recent publication.
In November 2013, the European Commission proposed a new trade secrets directive with the aim of harmonizing the law in the EU and thereby encouraging European cross-border investment, competition, and innovation. Following much debate, the “Directive (EU) 2016/943 of the European Parliament and of the Council of 8 June 2016 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure” (the “EU Directive”) entered into force on 5 July 2016. EU Member States must implement the EU Directive into their national laws by 9 June 2018.
In this alert, we outline the EU Directive’s key provisions and discuss its potential impact on companies operating in Europe (with a particular focus on implications for Germany and the UK). We also provide recommendations for companies doing business in Europe and compare the EU Directive with the US DTSA.
Scope of the EU Directive
The EU Directive sets out rules on the protection against the unlawful acquisition, use, and disclosure of trade secrets. But it specifies only a minimum harmonization of trade secrets protection in the EU. In other words, while the EU Directive generally provides for uniform protection, Member States can implement higher standards. The EU Directive does not address criminal sanctions, but does provide for civil rights and remedies. Member States remain free to maintain existing criminal sanctions.
What Is a Trade Secret?
Under the EU Directive, a “trade secret” means any information that: (i) is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question; (ii) has commercial value because it is secret; and (iii) has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret. In short, a trade secret is information that is not generally known, has commercial value and is protected by the trade secret holder to keep it secret.
This is consistent with the definition used in the World Trade Organization’s Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”). Nevertheless, the “reasonable steps” requirement appears to be novel for some EU Member States, which may not have incorporated the trade secrets definition in the TRIPS Agreement into their national laws. What constitutes “reasonable steps” may vary according to the trade secret’s value, the threats faced, and the cost of particular measures and likely will be the subject of future interpretation by the Court of Justice of the European Union (“CJEU”).
Although the rights in the EU Directive are similar to intellectual property (“IP”) rights, they are not considered IP rights. This is because the European lawmakers did not want to trigger provisions of other European laws relating to IP, such as the EU IPR Enforcement Directive (2004/48/EC) and the EU Customs Enforcement Regulation ([EC] No. 1383/2003).
The acquisition of trade secrets will be lawful if obtained by: (i) independent discovery or creation, (ii) reverse engineering or (iii) any other practice which conforms with honest commercial practices.
In addition, the acquisition, use, and disclosure of trade secrets shall be considered lawful to the extent that such acquisition, use, or disclosure is required or allowed by EU or national law.
Exceptions: The EU Directive also provides for various exceptions.
The EU Directive expressly responds to concerns that it may restrict employee mobility, stating that it shall not limit “employees’ experiences and skills honestly acquired in the normal course of employment.” The uncertain boundaries of this statement, however, make future interpretation by the CJEU inevitable.
This approach appears broadly consistent with the approach taken to “residual knowledge” of employees in certain Member States (e.g., the UK, see below). It also reflects the approach often taken by parties to the use of “know-how” in outsourcing and other technology agreements, i.e., to include a “residuals clause.” In any case, the EU Directive explicitly states that it will not prevent employers from concluding non-competition agreements with employees. Accordingly, restrictions and non-compete clauses concerning the use of trade secrets may continue to be used by employers, subject to national law.
Rights and Remedies
The EU Directive grants trade secret holders a broad range of remedies that are comparable (but not identical) to those available in intellectual property cases, e.g., injunctive relief, corrective measures, and damages.
Protection of Trade Secrets During Litigation
The EU Directive provides for specific measures to protect trade secrets during litigation, including restricting access to documents and to hearings. Although the laws of a few Member States allows certain in camera proceedings, these proceedings tend to be rare in practice. The EU Directive therefore does not foresee the use of completely in camera proceedings. Instead, it allows a “limited number of persons,” consisting of at least one natural person and one attorney from each party, access to otherwise confidential documents and secret hearings. These individuals are subject to a confidentiality obligation that survives termination of the proceedings.
In addition, court judgments containing confidential information will be kept confidential by removing pages containing confidential information or redacting those parts. Trade secret holders may request the publication of such a court judgment, which keeps confidential information secret but still identifies the infringer and the infringing acts. Such a request for partial publication is subject to a strict proportionality test that considers the interests of both the trade secret holder and the infringer. It remains to be seen whether the courts of the Member States will grant such requests. In Germany, for example, motions based on a similar provision in the German Patent Act (“PatG”) are rarely granted because applicants often fail to show the required legitimate interest.
Actions for trade secret infringement must be brought within a maximum of six years, but Member States can implement shorter time periods. The six year maximum limitation period is a welcome change for trade secret holders over prior draft versions of the EU Directive (e.g., the 2013 draft version, which specified a much shorter two year limitation period).
What the EU Directive Does Not Do
As mentioned above, trade secrets are not considered IP under the EU IPR Enforcement Directive and the EU Customs Enforcement Regulation. Consequently, trade secrets under the EU Directive do not benefit from the mechanisms that those regulations provide for IP rights, such as pre-litigation evidence collection under the EU IPR Enforcement Directive and border measures under the EU Customs Enforcement Regulation. The EU Directive does not provide specific rules on such measures for trade secrets either, leaving a gap in their protection.
Since Member States are free to implement or maintain higher standards of protection, such gaps may be filled by the laws of the Member States. As an example, the so-called “Düsseldorf procedure” in German patent cases permits obtaining and safeguarding evidence before filing a patent infringement complaint. This procedure, which was initially established by courts in Düsseldorf, could be extended to trade secrets.
Furthermore, due to lack of legislative power on the EU level, the EU Directive also does not cover criminal sanctions. Here, too, laws of the Member States may be used to fill this gap.
Implications of the EU Directive for Germany
Although Germany has no specific statute that comprehensively regulates the law of trade secrets, the standard of trade secrets protection in Germany is generally high. As a result, the implementation of the EU Directive into German law will likely require only minimal changes.
Trade secrets are currently protected by the Act Against Unfair Competition (“UWG”), which renders unlawful all acts contrary to honest business practices and provides for civil remedies and criminal sanctions in cases of misappropriation of trade and business secrets (Geschäfts- und Betriebsgeheimnisse). Additional provisions dealing with trade secret protection are found in other statutes, including the Civil Code (“BGB”), the Criminal Code (“StGB”), the Commercial Code (“HGB”), the Employee Inventions Act (“ArbnErfG”), as well as in the Works Constitution Act (“BetrVG”).
It remains to be seen whether the German courts will place greater emphasis on the precautionary “reasonable steps” undertaken to protect trade secrets, as discussed above. The current test under German law focuses on whether the need to keep certain information secret has become apparent under the circumstances, regardless of its financial value. Moreover, since reverse engineering generally is permissible under the EU Directive, German courts may be called to revisit their position that reverse engineering is considered unlawful if it requires “substantial investment.”
Companies in Germany likely will benefit from the enhanced protection accorded trade secrets in legal proceedings. While the German Civil Procedure (“ZPO”) provides certain mechanisms to protect trade secrets during litigation, the greater protections in the EU Directive are friendlier to the trade secret holder and thus may encourage more effective rights enforcement. Furthermore, the express implementation of the rights to recall and destroy infringing goods will further enhance the trade secret holder's position under German law.
While departing employees are traditionally well protected under German law (e.g., where a post-contractual secrecy obligation would unreasonably impair the departing employee’s professional development), whistleblowers likely will receive better protection in Germany after implementation of the EU Directive. Under German law, currently an employee who discloses a trade secret during his whistleblowing activity faces criminal sanctions under the Act Against Unfair Competition as well as the Criminal Code. Although the disclosure of the trade secret can possibly be justified under the Criminal Code the requirements for such a justification are difficult to meet. Thus, whistleblower protection in Germany is currently quite weak. In contrast under the Directive the disclosure of a trade secret through whistleblowing is only considered unlawful if the whistleblower did not act with the intent to protect a general public interest by revealing her company’s misconduct, wrongdoing or illegal activity. Hence, whistleblowing employees will be in a better position to justify the disclosure of a trade secret and to escape criminal sanctions under the Directive.
Lastly, it remains to be seen whether pecuniary damages under the EU Directive will replace default injunctive relief, which is typically awarded in Germany.
Implications of the EU Directive for the UK
The UK has no codified law on trade secrets. Current UK law protects trade secrets under contract law and the laws of equity. For this reason, the EU Directive’s provision of statutory trade secret protection for the first time represents a significant change to UK law – at least in theory.
In practice, however, the EU Directive is unlikely to dramatically change the law. Arguably, the test for the existence of a trade secret under the EU Directive is stricter than existing UK law, because it requires that the information is commercially valuable and that the owner must have taken reasonable steps to keep it confidential. But existing UK law also protects information with the necessary quality of confidentiality that is disclosed in circumstances importing an obligation of confidentiality and that is used without the consent and to the detriment of the owner. In addition, the UK courts are already experienced at handling confidential information and implementing appropriate measures for protecting trade secrets from being disclosed during litigation; for example, courts in the UK have the power to (i) order that certain documents be for the lawyers’ eyes only, (ii) impose express confidentiality undertakings on the parties, or (iii) order that irrelevant confidential information be redacted before disclosure. As such, while the EU Directive will supplement the UK courts’ approach to the disclosure of trade secrets during litigation, it will not be a new development.
As for employees, current UK law requires them not to disclose confidential information accessed during their employment. When their employment ends, confidential information should be protected indefinitely, but any residual information that has become part of an employee’s skill and experience cannot generally be protected unless specified by contract. Remedies under existing law are broadly similar to those in the EU Directive, e.g., damages, account of profits and injunction. Current UK law provides no criminal penalties for trade secret infringement.
Impact of Brexit!
The UK voted to leave the EU on 23 June 2016. However, until the expiry of the two year “Article 50” period that started in March 2017, the UK remains part of the EU and subject to EU law and regulation. The UK will still be part of the EU on 9 June 2018 and, therefore, according to EU law, the UK will still be obliged to implement the EU Directive into UK law prior to its formal departure from the EU. And the so-called “Great Repeal Bill” will convert existing EU law into domestic UK law at the point of Brexit in order to avoid the UK’s statute book containing significant gaps immediately post-Brexit.
Arguably, the UK may be happy to implement the new EU Directive given that, in practical terms, it does not significantly change the level of protection given to trade secrets under UK law, and adoption of the EU Directive will help to ensure a harmonized approach to trade secret protection for UK companies that operate across Europe. Moreover, even if/when the EU Directive is implemented into UK law, the UK could decide to repeal or change the law in the future.
Outlook to the US: How does the EU Directive Compare with the US DTSA?
The US DTSA is modeled on the Uniform Trade Secrets Act, which in its substantive terms is very similar to the TRIPS Agreement and the EU Directive. The definition of trade secrets in the US DTSA uses different wording than the EU Directive, but the scope of coverage appears to be almost identical. The specific facts of a case will continue to be critical to determining what qualifies as a trade secret under either definition.
The remedies are similar as well, for the most part. The most significant difference is that the DTSA includes a specific provision for ex parte seizures of trade secret information. In appropriate circumstances, this allows a victim of trade secret theft to obtain a court order, quickly and without advance notice to the defendant, to seize misappropriated trade secret information. This seizure remedy is to be used only in extraordinary circumstances and requires a series of specific findings. As a result, it is unlikely to be used often.
Like the EU Directive, the US DTSA finesses the question of enforceability of employee non-competition agreements. The Act allows restrictions on employment relationships if they are “based on evidence of misappropriation and not merely on the information the person knows.” At the same time, the Act expressly forbids injunctions that “conflict with an applicable State law prohibiting restraints on the practice of a lawful profession, trade, or business.”
Also like the EU Directive, the US DTSA provides specific protections for whistleblowers. This differs from current state trade secrets laws, and it remains to be seen how broadly these protections will be construed.
Finally, the US DTSA requires the US Attorney General to prepare biannual reports detailing or providing, among other things: the scope of theft of American trade secrets occurring outside of the United States; the extent to which those thefts are sponsored by foreign governments; a breakdown of the trade secret protections by each of the United States’ trading partners; and specific recommendations to the executive and legislative branches for reducing trade secret theft and protecting American companies. The first report is due in one year. These provisions do not change any legal requirements, but illustrate the increasing concern among US lawmakers about international trade secrets issues.
Conclusions and Recommendations
The EU Directive does not radically change trade secrets law in Europe, but does help to harmonize trade secrets law across Europe with the goal of bolstering investment, innovation, and competition and reducing costs. The new rights may be particularly helpful for small and medium-sized organizations that lack the budget and resources for extensive patent protection. Nonetheless, many organizations will still want to rely on intellectual property protection where appropriate, and the EU Directive will not mean that confidentiality agreements are no longer required. Contractual rights of confidentiality will continue to be used to enhance statutory rights under the EU Directive. In addition, because the EU Directive is a minimum harmonization law, organizations will still need to be aware of any supplemental provisions under national laws implementing the EU Directive.
To benefit from the EU Directive’s protections, companies with valuable trade secrets should begin thinking about potential changes to their processes and procedures now, ahead of the implementation deadline. In particular, we recommend that organizations:
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