WIPO Symposium on Trade Secrets and Innovation

Jane Lambert

Before he began his distinguished career in the WIPO, Francis Gurry was best known for a rather good book on the law of confidence.  It is now in its second edition having been updated and edited by Tanya Aplin, Lionel Bently, Phillip Johnson, and Simon Malynicz. Although the law of confidence can be used to prevent unauthorized use or disclosure of any kind of secret information, it is the legal mechanism by which trade secrets are protected in the United Kingdom.  It is probably the most widely used means of protecting investment in innovation and creativity in this and other common law countries.

The law of confidence offers a number of advantages over patents and other registered rights.  It is free. It arises whenever information the use or disclosure of which would benefit the confidant or harm the confider is imparted in circumstances that give rise to an obligation of confidence. It cannot be revoked as a patent can and the obligation of confidence can subsist indefinitely so long as secrecy can be maintained.  It is widely used in information technology because computer programs are not patentable as such in the UK and other parties to the European Patent Convention.

Although every country that is party to the Agreement Establishing The World Trade Organization is required by Section 7 of Part II of the Agreement on Trade-Related Aspects of Intellectual Property Rights to protect undisclosed information, states discharge that obligation in different ways.  The European Commission found many differences in the laws of the EU member states. Paragraph 6 of the recitals to the Trade Secrets Directive (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 (Text with EEA relevance) OJ L 157, 15.6.2016, p. 1–18) noted:

"Notwithstanding the TRIPS Agreement, there are important differences in the Member States' legislation as regards the protection of trade secrets against their unlawful acquisition, use or disclosure by other persons. For example, not all Member States have adopted national definitions of a trade secret or the unlawful acquisition, use or disclosure of a trade secret, therefore knowledge on the scope of protection is not readily accessible and that scope differs across the Member States. Furthermore, there is no consistency as regards the civil law remedies available in the event of unlawful acquisition, use or disclosure of trade secrets, as cease and desist orders are not always available in all Member States against third parties who are not competitors of the legitimate trade secret holder. Divergences also exist across the Member States with respect to the treatment of a third party who has acquired the trade secret in good faith but subsequently learns, at the time of use, that the acquisition derived from a previous unlawful acquisition by another party."

Although those differences in the EU should have been harmonized to a large extent by the Trade Secrets Directive, it is likely that similar differences will persist elsewhere with a deleterious effect on international trade and investment.

It is therefore appropriate that the WIPO will hold a Symposium on Trade Secrets and Innovation on 25 and 26 Nov 2019.  The Symposium is open to all WIPO member states and accredited IGOs and NGOs but intellectual property professionals, academics, students and other interested circles, whose scope of activity relates to the subject of the Symposium, may also attend. The provisional programme looks very interesting with contributions from Mr David Kappos, former Director of the US Patents and Trademark Office, Mr Andrew Staines, our Ambassador and Deputy Permanent Representative (Economic) to the United Nations agencies in Geneva and Dr Gurry.

Recognizing that it will not be possible or convenient for everyone with an interest in this topic to make his or her way to Geneva the symposium will be webcast.

Anyone wishing to discuss this article or trade secrets and the law of confidence generally should call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact page.

Further Reading
Jane Lambert  The Trade Secrets Directive 7 July 2016 NIPC Law
Jane Lambert  Transposing the Trade Secrets Directive into English Law: The Trade Secrets (Enforcement etc) Regulations 6 June 2018 NIPC Law
Jane Lambert Transposing the Trade Secrets Directive into English Law: Confidentiality Agreements  5 Feb 2018 NIPC Law
Jane Lambert Trade Secrecy Law changes Tomorrow - check your NDA, Standard Terms and other Agreements 8 June 2018 NIPC Inventors Club
Jane Lambert Checking your Confidentiality Clauses and Agreements for Compliance with the Trade Secrets Directive 7 June 2018 NIPC News
Jane Lambert  Duty of Confidence 27 May 2010 last updated 26 June 2018