Reverse burden of proof and trade secrets in patent litigation – Part two

 

In my previous post (here), I discussed the reverse burden of proof on an international level and the potential tension which could emerge between the patent and trade secrets regimes in this context. In this post, I will turn the focus to Europe and discuss the regional provisions as well as the relevant provisions of the UPC Agreement.

The Enforcement Directive and the Trade Secrets Directive

There are a few provisions in the Enforcement Directive on confidentiality in court proceedings. The need to preserve confidentiality in intellectual property litigation is recognized in the recital of the directive (Recital 20). In addition, a few provisions (Arts. 6 (2), 7 (1) and 8 (2) (e)) of the directive deal with the protection of confidential information in IP litigation.

The drafters of the directive have recognized the need to protect the confidential information of the adverse party. But what is to be noted is that the Enforcement Directive does not contain any provision on the reverse burden of proof in patent litigation, or the protection of trade secrets in these situations.

The Trade Secrets Directive includes a specific provision (Art. 9) on the protection of trade secrets in litigation concerning the unlawful use or disclosure of a secret (See my post on trade secret litigation here). Ergo, said provision is not applicable in patent litigation. However, Art. 9 of the Trade Secrets Directive could provide for certain general examples of how trade secrets could be protected in patent litigation. These include restricting access to documents, restricting access to hearings, and providing non-confidential versions of judgments. There should for example be no immediate obstacle for a national legislator to include similar provisions in national laws.

Continue reading “Reverse burden of proof and trade secrets in patent litigation – Part two”

Shhh….Keeping the Secret Secret and Trade Secret Litigation

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“Whatever you do, don’t tell anyone”

(Queens of the Stone Age – The Lost Art of Keeping a Secret)

I doubt Josh Homme was thinking about trade secrets when he wrote the above lyrics, but there’s some valuable “legal advice” hidden in those lines. Namely, as often pointed out, once a trade secret is out, it may be lost forever.

Indeed, the secret maybe lost but not necessarily given away for free. Trade secret legislation is designed particularly for these unfortunate situations. Once the secret is out, you may not be able to get it back in the bottle again. But you may be able to stop further spreading of the secret and at least get some damages from the perpetrator. This will usually mean you will have to go to court for enforcement. And this is where it may get a bit tricky: Alas, in order for the enforcement to be successful you will probably have to disclose your secret. That doesn’t sound very tempting if your trade secret is valuable, does it? Continue reading “Shhh….Keeping the Secret Secret and Trade Secret Litigation”