Third Party Liability in Patents and Trade Secrets

Trade secrets protection extends the liability of misappropriation not only to those who directly engage in unlawful conducts but also to third parties. As primary actors often misappropriate trade secrets to disclose them to a third party who would then (say) actually use them, such third party liability is believed to be essential for meaningful protection of trade secrets and preventing dishonest commercial practices. In intellectual property, third party liability is distinguished from primary liability on the basis of subjective requirements: knowledge and intent. Primary infringement is traditionally conceived as a strict liability regime, with knowledge and intent playing a limited role. The absence of a good faith infringement defence in patent law, for example, is a strong indication of this. However, as trade secrets misappropriation is conceived around the prevention of commercial dishonesty, knowledge and intent play an important part. Art 4(5) of the EU Trade Secrets Directive has created new types of misappropriation liability, which arguably may shift trade secrets misappropriation under EU law closer to patent infringement since it allows tracing of liability through goods embodying trade secrets. 
 
Using the texts of Articles 26 the Unified Patent Court Agreement and article 4 EU Trade Secrets Directive as examples of patent infringement and misappropriation, this paper examines and compares the role of knowledge and intent in patents and trade secrets. We  argue that due to absence of notice on the substance of the protected subject matter, the level of knowledge required for third party misappropriation should be strictly interpreted. The substance of trade secret cannot be implied by the secrecy measures alone. Thus, third party liability in trade secrets should be clearly doctrinally differentiated from third party/ secondary  liability of other registrable rights such as patents.  As Member States implement the Directive, this observation should be useful as it points towards (1) the importance of taking reasonable steps requirement seriously in the assessment of misappropriation, (2) a need  to differentiate levels of knowledge and intent, at each stage of misappropriation (acquisition, use and disclosure) and (3) argues in favour of a strong good faith consideration reflected in both injunction and compensatory remedies.
 

__

 

Each year the OIPRC hosts a number of leading academics from around the world as part of its Invited Speaker Series. These events typically run from 5:15-6:45pm on Thursday evenings at St. Peter’s College; if the venue or time is different, it will be noted on the Events calendar.  The Speaker Series consists of a presentation of about 45 minutes, followed by a Q&A session with the assembled group of academic staff, students (both undergraduate and graduate), researchers, and interested members of the public.  Discussion is informal and includes participants from several disciplines, with a wide range of prior knowledge.

 

Convenors: Dev Gangjee and Robert Pitkethly

 

Refreshments and snacks are served at the conclusion of the discussion.  All are welcome.