Protecting Your Trade Secrets in Ireland

For as long as they remain confidential, trade secrets and other forms of confidential information are very valuable assets but are not necessarily protected by intellectual property rights in the traditional sense. While in certain cases a trade secret may be patentable, allowing for a choice to patent it for a limited time or keep it private. Copyright will offer only limited protection.

Keeping information confidential as trade secrets is often a desirable approach in adding value to an organisation and its assets, while further acting as an incentive for parties to conduct research and development in a competitive but secure environment.

The European Union (Protection of Trade Secrets) Regulations 2018 (the “Regulation”) came into force on 9 June 2018 and implemented the European Trade Secrets Directive 2016/943 (the “Directive”) on the protection of undisclosed know-how and business information (i.e. trade secrets) against their unlawful acquisition, use and disclosure. The Directive aims to provide a uniform approach across the EU to trade secrets.

A trade secret is defined under the Directive as information that:

1. is a secret i.e. it is not generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question;
2. has commercial value because it is a secret; and
3. has the person lawfully in control of the information taken reasonable steps under the circumstances to keep it secret.

The onus is on the trade secret holder (i.e. the person lawfully controlling the trade secret) to show that the information in question falls within the above definition.

Once the information falls within the definition of a trade secret it may then benefit from the protection of the Directive in relation to its acquisition, use and disclosure.

Under Article 3 of the Directive, the acquisition of a trade secret shall be considered lawful when the trade secret is obtained by any of the following means:

• independent discovery or creation;
• observation, study, disassembly or testing of a product or object that has been made available to the public or that is lawfully in the possession of the acquirer of the information who is free from any legally valid duty to limit the acquisition of the trade secret;
• exercise of the right of workers or workers’ representatives to information and consultation in accordance with Union law and national laws and practices;
• any other practice which, under the circumstances, is in conformity with honest commercial practices.

The acquisition of a trade secret shall be considered unlawful whenever carried out, without the consent of the trade secret holder, by a person who is found to meet any of the following conditions:

• having acquired the trade secret unlawfully;
• being in breach of a confidentiality agreement or any other duty not to disclose the trade secret; or
• being in breach of a contractual or any other duty to limit the use of the trade secret.

Further, the acquisition of a trade secret shall be considered unlawful where a person knew or ought, under the circumstances, to have known that the trade secret had been obtained directly or indirectly from another person who was using or disclosing the trade secretly unlawfully under the conditions set out above.

If there has been unlawful acquisition, use or disclosure of a trade secret a person will have up to 6 years within which they can take legal action.

How we can help

BHSM offers a full suite of advisory services in relation to trade secrets and if you are interested in discussing any of the information contained in this article with us, please feel free to contact Joe McVeigh or Lee Taren in our Technology and Intellectual Property Team.

This article is for general information purposes.  Legal advice must be obtained for individual circumstances.  Whilst every effort has been made to ensure the accuracy of this article, no liability is accepted by the author for any inaccuracies.