European Union (Protection of Trade Secrets) Regulations 2018

JurisdictionIreland
CitationIR SI 188/2018

Notice of the making of this Statutory Instrument was published in

“Iris Oifigiúil” of 15th June, 2018.

I, HEATHER HUMPHREYS, Minister for Business, Enterprise and Innovation, in exercise of the powers conferred on me by section 3 of the European Communities Act 1972 (No. 27 of 1972) and for the purpose of giving effect to Directive (EU) 2016/943 of the European Parliament and of the Council of 8 June 20161 , hereby make the following regulations:

PART 1

Preliminary and General

1. (1) These Regulations may be cited as the European Union (Protection of Trade Secrets) Regulations 2018.

(2) These Regulations shall come into operation on 9 June 2018.

2. (1) In these Regulations—

“appropriate court” means—

(a) the District Court, where the damages or the value of the other relief sought in any action to which the application relates is not liable to exceed such sum as stands specified by an enactment to be the jurisdiction of the District Court for actions in contract or tort,

(b) the Circuit Court, where the damages or the value of the other relief sought in any action to which the application relates is not liable to exceed such sum as stands specified by an enactment to be the jurisdiction of the Circuit Court for actions in contract or tort, and

(c) in any other case, the High Court;

“Directive” means Directive (EU) 2016/943 of the European Parliament and of the Council of 8 June 20161 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure.

(2) A word or expression, that is used in these Regulations and that is also used in the Directive has, unless the context otherwise requires, the same meaning in these Regulations as it has in the Directive.

PART 2

Acquisition, Use and Disclosure of Trade Secrets

3. (1) The acquisition of a trade secret shall be considered lawful when the trade secret is obtained by any of the following means:

(a) independent discovery or creation;

(b) observation, study, disassembly or testing of a product or object that-

(i) has been made available to the public, or

(ii) is lawfully in the possession of the acquirer of the information who is free from any legally valid duty to limit the acquisition of the trade secret;

(c) exercise of the right of workers or workers’ representatives to information and consultation in accordance with European Union law and the law, and practices, of the State;

(d) any other practice which, under the circumstances, is in conformity with honest commercial practices.

(2) The acquisition, use or disclosure of a trade secret shall be considered lawful to the extent that such acquisition, use or disclosure is required or allowed by European Union law or the law of the State.

4. A trade secret holder shall be entitled to apply for the measures, procedures and remedies provided for in these Regulations in order to prevent, or obtain redress for, the unlawful acquisition, use or disclosure of the trade secret concerned.

5. (1) The acquisition of a trade secret without the consent of the trade secret holder shall be considered unlawful whenever carried out by:

(a) unauthorised access to, appropriation of, or copying of any documents, objects, materials, substances or electronic files, lawfully under the control of the trade secret holder, containing the trade secret or from which the trade secret can be deduced;

(b) any other conduct which, under the circumstances, is considered contrary to honest commercial practices.

(2) The use or disclosure of a trade secret shall be considered unlawful whenever carried out, without the consent of the trade secret holder, by a person who is found to meet any of the following conditions:

(a) having acquired the trade secret unlawfully;

(b) being in breach of a confidentiality agreement or any other duty not to disclose the trade secret;

(c) being in breach of a contractual or any other duty to limit the use of the trade secret.

(3) The acquisition, use or disclosure of a trade secret shall be considered unlawful whenever a person, at the time of the acquisition, use or disclosure, knew or ought, under the circumstances, to have known that the trade secret had been obtained directly or indirectly from another person who was using or disclosing the trade secret unlawfully within the meaning of paragraph (2).

(4) The use of a trade secret shall be considered unlawful where—

(a) a person—

(i) produces, offers or places infringing goods on the market, or

(ii) imports, exports or stores infringing goods for the production, offering or placing of the infringing goods on the market, and

(b) the person referred to in paragraph (a) knew or ought, under the circumstances, to have known that the trade secret was used unlawfully within the meaning of paragraph (2).

6. The appropriate court shall dismiss an application for the measures, procedures and remedies provided for in these Regulations where it is satisfied that the alleged acquisition, use or disclosure of the trade secret was carried out in any of the following cases:

(a) for exercising the right to freedom of expression and information as set out in the Charter of Fundamental Rights of the European Union, including respect for the freedom and pluralism of the media;

(b) for revealing misconduct, wrongdoing or illegal activity, provided that the respondent acted for the purpose of protecting the general public interest;

(c) disclosure by workers to their representatives as part of the legitimate exercise by those representatives of their functions in accordance with European Union law or the law of the State, provided that such disclosure was necessary for that exercise;

(d) for the purpose of protecting a legitimate interest recognised by European Union law or the law of the State.

7. Section 5 of the Protected Disclosures Act 2014 (No. 14 of 2014) is amended—

(a) in subsection (1), by the substitution of “subsections (6) and (7A)” for “subsection (6)”,

(b) in subsection (7), by the substitution of “Subject to subsection (7A), the motivation” for “The motivation”, and

(c) by the insertion of the following subsection after subsection (7):

“(7A) Where a worker, referred to in subsection (1), makes a disclosure of relevant information in the manner specified by that subsection, and in respect of that disclosure of relevant information it is alleged that the disclosure concerned the unlawful acquisition, use or disclosure of a trade secret (within the meaning of the European Union (Protection of Trade Secrets) Regulations 2018 ( S.I. No. 188 of 2018 )), such disclosure is a protected disclosure provided that the worker has acted for the purposes of protecting the general public interest.”.

PART 3

Measures, Procedures and Remedies

8. (1) Where—

(a) an application concerning the unlawful acquisition, use or disclosure of a trade secret is found by the appropriate court to be manifestly unfounded, and

(b) the applicant is found to have initiated the legal proceedings referred to in subparagraph (a) abusively or in bad faith, the appropriate court may, upon an application by the respondent, apply appropriate measures as it thinks fit, including, without prejudice to the generality of the foregoing—

(i) awarding damages to the respondent,

(ii) imposing sanctions on the applicant, or

(iii) ordering the dissemination of information concerning a decision as referred to in Regulation 17.

(2) An application in respect of more than one of the measures specified in paragraph (1) may be made in separate legal proceedings for each such measure.

9. (1) Section 11(1) of the Statute of Limitations 1957 (No. 6 of 1957) is amended by the insertion after paragraph (e) of the following paragraph:

“(f) actions under the European Union (Protection of Trade Secrets) Regulations 2018 ( S.I. No. 188 of 2018 ), other than Regulation 18 of those Regulations.”.

(2) For the purposes of paragraph (f) of section 11(1) of the Statute of Limitations 1957 (No. 6 of 1957), the reference to “actions” shall be construed as any application to an appropriate court under these Regulations (other than proceedings under Regulation 18).

10. (1) In legal proceedings relating to the unlawful acquisition, use or disclosure of a trade secret, an appropriate court may, in response to a duly reasoned application by an interested party, make an order directing that one or more relevant persons shall not be permitted to use or disclose any trade secret or alleged trade secret—

(a) which the appropriate court has, in response to that duly reasoned application, identified as confidential, and

(b) of which any relevant person has become aware as a result of participating in the legal proceedings relating to the unlawful acquisition, use or disclosure of a trade secret or who has access to documents which form part of those legal proceedings.

(2) Without prejudice to paragraph (1), in the legal proceedings referred to in that paragraph an appropriate court may, on its own motion, make an order directing that one or more relevant persons shall not be permitted to use or disclose any trade secret or alleged trade secret—

(a) which the appropriate court, on its own motion, has identified as confidential, and

(b) of which any relevant person has become aware as a result of participating in the legal proceedings relating to the unlawful acquisition, use or disclosure of a trade secret or who has access to documents which form part of those legal proceedings.

(3) Subject to paragraph (4), an order made by the appropriate court under paragraph (1) or (2) shall remain in force after the legal proceedings referred to in paragraph (1) or as the case may be, paragraph (2), have ended.

(4) An order made under paragraph (1) or (2) shall cease to have effect in any of the following circumstances:

(a) where the alleged trade secret is...

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