The Trade Secrets (Enforcement, etc.) Regulations 2018 Consultation
Jane Lambert
As I noted in The Trade Secrets Directive 7 July 2016 NIPC Law, 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 has to be transposed into national law by 9 June 2018. The Intellectual Property Office has published draft regulations that appear in Annex A of a consultation document on draft regulations concerning draft secrets. These regulations are likely ti be called "The Trade Secrets (Enforcement, etc.) Regulations 2018."
A news story dated 19 Feb 2018 explains that the government is canvassing views on those draft regulations and has posed the following questions:
"Q1. Do you agree that regulations 2 and 3 implement effectively the definitions in the Directive?
Q2. What are your views on the rules set out in regulations 4 – 9?
Q3. Do you agree that regulation 10 provides the appropriate level of clarity and transparency with regard to preserving the confidentiality of trade secrets in proceedings?
Q4. Do you agree that regulation 11 is necessary to ensure that the UK complies with Article 10 of the Directive?
Q5. Do you agree that regulation 12 is necessary to ensure certainty and compliance with the Directive?
Q6. Do you agree that regulation 13 is necessary to ensure that the UK complies with Article 11(3) of the Directive?
Q7. Do you agree that regulations 14 and 15 are necessary in order to ensure that the UK complies with Articles 12 and 13(1) of the Directive?
Q8. Do you agree that regulation 16 is necessary in order to implement Article 13(3) of the Directive?
Q9. Do you agree that regulation 17 is necessary in order to implement Article 14 of the Directive?
Q10. Do you agree that regulation 18 is necessary in order to implement Article 15 of the Directive?
Q11. Do you agree with the overall approach taken to implement the Directive? Q12. Do you agree that we have correctly identified all the relevant articles in the Directive that need implementing in UK law to ensure the UK complies with the Directive?"
An explanatory note at the end of the draft regulations states:
"These Regulations implement provisions of 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 (OJ L157, 15.6.2017, p.1) (“the Directive”). A number of the provisions of the Directive have been implemented in the United Kingdom by common law or statute and these Regulations address those areas where gaps occur or where the implementation of the provisions of the Directive by the law of the United Kingdom may be made more transparent."
By attempting to fill in the gaps the government is grafting the Directive onto the law of confidence. For instance, the definition of "trade secrets" in the Directive is:
"‘trade secret’ means information which meets all of the following requirements:
(a) it 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;
(b) it has commercial value because it is secret;
(c) it has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret."
In the draft regulations information is a trade secret only if it is also confidential:
“'trade secret' means confidential information which—
"(a) 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;
(b) has commercial value because it is secret;
(c) has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret."
Q2. What are your views on the rules set out in regulations 4 – 9?
Q3. Do you agree that regulation 10 provides the appropriate level of clarity and transparency with regard to preserving the confidentiality of trade secrets in proceedings?
Q4. Do you agree that regulation 11 is necessary to ensure that the UK complies with Article 10 of the Directive?
Q5. Do you agree that regulation 12 is necessary to ensure certainty and compliance with the Directive?
Q6. Do you agree that regulation 13 is necessary to ensure that the UK complies with Article 11(3) of the Directive?
Q7. Do you agree that regulations 14 and 15 are necessary in order to ensure that the UK complies with Articles 12 and 13(1) of the Directive?
Q8. Do you agree that regulation 16 is necessary in order to implement Article 13(3) of the Directive?
Q9. Do you agree that regulation 17 is necessary in order to implement Article 14 of the Directive?
Q10. Do you agree that regulation 18 is necessary in order to implement Article 15 of the Directive?
Q11. Do you agree with the overall approach taken to implement the Directive? Q12. Do you agree that we have correctly identified all the relevant articles in the Directive that need implementing in UK law to ensure the UK complies with the Directive?"
An explanatory note at the end of the draft regulations states:
"These Regulations implement provisions of 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 (OJ L157, 15.6.2017, p.1) (“the Directive”). A number of the provisions of the Directive have been implemented in the United Kingdom by common law or statute and these Regulations address those areas where gaps occur or where the implementation of the provisions of the Directive by the law of the United Kingdom may be made more transparent."
By attempting to fill in the gaps the government is grafting the Directive onto the law of confidence. For instance, the definition of "trade secrets" in the Directive is:
"‘trade secret’ means information which meets all of the following requirements:
(a) it 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;
(b) it has commercial value because it is secret;
(c) it has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret."
In the draft regulations information is a trade secret only if it is also confidential:
“'trade secret' means confidential information which—
"(a) 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;
(b) has commercial value because it is secret;
(c) has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret."
That is unnecessary because the Directive is a complete code. It is a missed opportunity because our trade secrets law is already confusing and anomalous and this was an opportunity to simplify it. This approach also risks non-compliance with the Directive. I shall be making those points and others in my response to the consultation the closing date for which is 16 March 2018,
Anyone wishing to discuss this article or trade secrets law in general may call me on 020 7404 5252 during office hours or send me a message through my contact form.
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