Quarterly International Ip Law Update

• Publication year: 2020
• Author: David Tseng

Quarterly International IP Law Update

David Tseng

Dorsey & Whitney LLP

Mariana Noli

Noli IP Solutions PC

Leaf Williams

Reichman Jorgensen

CROSS-BORDER TRADE SECRETS: COMPARING STANDARDS FROM U.S., EU, AND JAPAN

Over the past decade, there have been major reforms to intellectual property laws, both in the United States and abroad. The modernization and harmonization of trade secret laws around the world has been a major aspect of these reforms. With respect to trade secrets and cross-border protection, there are two important considerations. The first is how different jurisdictions approach trade secrets. As with patents, the definition of "trade secret" differs from jurisdiction to jurisdiction. Although the standards are largely harmonized, minor differences can be significant, especially when dealing with interpretation and enforcement before judicial authorities.

The second consideration is how to protect the trade secret. Whereas patents are premised on a quid quo pro grant of a limited monopoly in exchange for the public disclosure of valuable know-how, trade secrets are rooted in keeping valuable information confidential. Although trade secrets do not expire, they are lost once known to the public or reverse engineered by a third party. The delicate nature of trade secrets is directly at odds with the conveniences provided by modern technology. For example, the use of cloud computing allows for the access of sensitive data from anywhere where the Internet is available. Likewise, the pervasiveness of thumb drives capable of storing large amounts of information and handsets that can easily film confidential information increases the difficult of keeping valuable data away from the public.

Therefore, a trade secret owner must be aware of the differences in trade secret law across every jurisdiction in which he or she does business. This article will identify the legal framework of trade secrets for the United States, the European Union, and Japan and will discuss some of the nuances between the legal variations in these areas.

TRIPS and International Trade Secret Protection

The Agreement on Trade-Related Aspects of International Property Rights ("TRIPS ") established minimum standards on trade secrets for WTO member nations. Article 39(2) of TRIPS is directed to the "protection of undisclosed information" and it requires member nations to protect information that is not "generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question," that "has commercial value because it is secret," and that has been "subject to reasonable steps under the circumstances.to keep it secret."

Article 42 of TRIPS mandates that member nations implement fair and equitable civil judicial procedures to protect intellectual property rights, however, the provision allows for each member state to determine exactly what...