Trade Secrets and Patent Litigation

Abstract

1. It is an honour to be invited to write an article on the occasion of the 70 birthday of Joseph Strauss, one of the icons of the intellectual property world. I have had the pleasure of working with Joseph not only in the context of AIPPI, where I succeeded him as chair of the special committee on biotechnology and plant breeders’ rights, but also on a number of patent cases. As a token of congratulation, I would like to develop some thoughts on the question of how trade secrets could or should be protected in patent litigation. There are several instances where trade secrets become an issue in patent litigation and in such situations there is clearly a high degree of tension between, on the one hand, the principle that the truth should be revealed as much as possible in litigation and, on the other hand, the desire not to disclose particular information. In the preliminary stages of litigation where the patentee tries to obtain evidence on infringement, particular measures that the patentee can take under national law (discovery-type measures, preliminary witness hearings, orders to provide information on the source of the infringing products or on customers, etc.) may result in the disclosure of trade secrets by the alleged infringer. Furthermore, during the course of litigation, the court may order the disclosure of evidence potentially containing secret information. It is interesting to see whether and how the protection of trade secrets in such a situation is guaranteed. 2. The starting point of the legal tour d'horizon is the TRIPS treaty, the international basis for the enforcement of IP rights. This treaty formed the basis for what is known as the EU Enforcement Directive, which is also relevant to the issue of trade secrets in patent cases.1 Let us first see which provisions of the various international instruments are relevant. In order to try to define what I understand trade secrets to be, it is good to investigate whether there is any international consensus on this issue. The Paris Convention does not explicitly refer to the protection of trade secrets. Of course Article 10bis of that convention obliges members of the Union of the Paris Convention to give protection against acts of unfair competition. It is under that umbrella that a number of national laws grant protection against the abuse of trade secrets. Article 39 of TRIPS requires member states to protect undisclosed information in the course of ensuring effective protection against unfair competition as provided for in Article 10bis Paris Convention. On the basis of Article 1(2) TRIPS such protection falls under the protection of ‘intellectual property’ which, to the extent that trade secrets are concerned, is not surprising because protection against unfair competition falls under the definition of the protection of industrial property rights laid down in Article 1(2) Paris Convention. Article 39