Implementing EU Trade Secrets Directive into Polish legal system

Aims of EU Trade Secrets directive
Draft implementation law
Comment


The Polish legislature is in the process of implementing the EU Trade Secrets Directive (2016/943/EC). Trade secrets in Poland are protected by the Act on Combating Unfair Competition 1993, which is therefore expected to be amended. The new legislation is considered to be generally compliant with the directive and is likely to come into force on June 9 2018.

Aims of EU Trade Secrets directive

The lack of balance and uneven level of protection provided to trade secrets in the European Union triggered the need to introduce legislative changes. These amendments aimed to facilitate cross-border activities and remedy entrepreneurs' fears about the risk of losing capital invested and time spent on investments in research and development and innovation as a result of unfair competition activities (eg, the unlawful acquisition, use or disclosure of intellectual creations and innovative know-how by other parties).

The EU Trade Secrets Directive's goals include:

• providing a sufficient and consistent level of civil redress in the event of unlawful acquisition, use or disclosure of a trade secret;
• adopting a uniform definition of 'trade secret', which should include know-how and business and technological information where there is both a legitimate interest in keeping them confidential and a legitimate expectation that such confidentiality will be preserved;
• determining situations where legal protection of trade secrets is justified;
• recognition that some circumstances of acquisition, use or disclosure of a trade secret should be treated as lawful, especially in the case of reverse engineering; and
• establishing specific requirements aimed at protecting the confidentiality of the litigated trade secret in the course of legal proceedings.

Draft implementation law

Trade secrets in Poland are protected by Article 11 of the Act on Combating Unfair Competition. There was some discussion regarding how to implement the directive, with the enactment of a separate law which encompassed all of the pertinent regulations regarding trade secrets and its protection having been suggested. However, the legislature decided to implement the directive by amending the Act on Combating Unfair Competition, the Civil Procedure Code and some other relevant laws.

The new draft law is generally compliant with the EU Trade Secrets Directive. However, the following points need to be either corrected or clarified:

• The new law should include the same definition of trade secrets and their infringement as the directive. The proposed wording suggests that infringement occurs irrespective of the consent of the trade secret holder – for obvious reasons, such a paradoxical conclusion was unintentional.
• The new law should not legalise actions taken with the consent of an "entrepreneur entitled to use", as such an entrepreneur could mean every licensee. Again, consent must be issued by the trade secret holder.
• It should be clarified that a trade secret holder comprises any natural or legal person, even if it is not an entrepreneur.
• The new law should explicitly follow the directive in providing that the infringer should be understood as any natural or legal person that has unlawfully acquired, used or disclosed a trade secret. Given that save for a couple of explicit exceptions, the Act on Combating Unfair Competition's prohibitions concern entrepreneurs, the new regulation should explicitly prohibit natural persons, including employees, from infringing trade secrets.

Comment

The legislature should be praised for its attempt to implement the EU Trade Secrets Directive on time. However, work on the new draft legislation appears to be progressing too quickly in order to discover and eliminate possible deficiencies and guarantee the directive's full implementation.

For further information on this topic please contact Szymon Gogulski or Jacek Zwara at Soltysinski Kawecki & Szlezak by telephone (+48 22 608 7000) or email (szymon.gogulski@skslegal.pl or jacek.zwara@skslegal.pl). The Soltysinski Kawecki & Szlezak website can be accessed at www.skslegal.pl.