UK government responds to trade secrets consultation input
The UK government has responded to comments on a technical consultation centring on the implementation of the EU trade secrets directive.
The government released its response yesterday, May 15.
In May 2016 the European Council adopted the trade secrets directive, which increases harmonisation of trade secrets laws across the EU. Under Directive (EU) 2016/943, a trade secret is defined as providing commercial value to a company because it is secret.
The new rules oblige EU member states to ensure that victims of trade secret misuse are able to defend their rights in court and seek compensation, and EU countries must introduce laws to comply with the directive by June 9, 2018.
Although the UK is due to leave the union in March next year, as it is currently a member, it has an obligation to comply with the legislation. In July last year the UK Intellectual Property Office (IPO) held a meeting with stakeholders to discuss the implementation of the directive.
The IPO launched a technical consultation on the EU directive and the draft UK regulations that will implement the directive into UK law in February 2018. It invited responses from the legal profession, professional bodies and organisations with an interest in IP.
Respondents included the International Association for the Protection of Intellectual Property UK, Chartered Institute of Patent Attorneys, Corporate Europe Observatory, and Licensing Executives Society.
Mr Justice Arnold, a High Court judge in the Chancery Division, also contributed.
The government response, released yesterday, explained that trade secrets are currently protected by the law of confidence in the UK. “The unlawful acquisition, use or disclosure of a trade secret would give rise to an action in the civil courts for breach of confidence,” it said.
One change the government said it intends to make following the consultation is to revise the definitions set out in the draft UK regulations to make them more aligned to the wording of the EU directive.
For example, it confirmed that the term ‘person’ refers to “a body of persons corporate or unincorporated by virtue of the Interpretation Act 1978”.
Some responses to the technical consultation noted that the UK’s draft regulations did not fully implement articles 12 and 13(1) of the directive, which provide for the corrective measures that might be imposed on an infringer.
The government agreed and said it is “necessary” to implement the articles “more fully” to “aid transparency and consistency and ensure compliance with the directive”.
Although the majority of respondents agreed that article 14 of the EU directive, relating to the award of damages, needs to be reflected in the UK regulation, some contributors noted that there should be “strict restrictions” on the damages that can be sought.
In the government’s response it noted the concerns and said “the wording of the directive needs to be followed more closely”. It added that the “technical changes” made to the UK regulations will “aid clarity” in this area, and that “the courts are able to exercise discretion to ensure damages are fair and proportionate”.
Other responses to the consultation claimed that UK legislation to this effect is unnecessary; that further clarity on emergency injunctive relief and seizures is required; and that additional information on the relationship between the EU directive and the draft UK regulations is necessary, according to the government.
The government said the final version of the UK regulations will be made public when they are presented to parliament.
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