Protection of business secrets in connection with information claim in Industrial Property Law (part 3)

To stay within the theme of information claim introduced by Industrial Property Law dated 30^th June 2000 r. (hereinafter referred to as: “IPL”) this article will concern the issue of protection of information provided at the court request in accordance with the information claim.

To start with the characteristic of the information that can be qualified as a business secret, it shall mean “technical, technological or organizational information of the enterprise or other information of an economic value which, as a whole or in a special layout and collection of its elements is not commonly known to persons usually dealing with this type of information or is not easily accessible to those persons, provided that the person authorized to use the information or management of the same has taken, exercising due diligence, actions with a view to maintain its confidentiality.”[1] Above definition is derived from Unfair Competition Act dated 16^th April 1993 (hereinafter referred to as: “UCA) as IPL do not include it.

Characteristics of business secretes under Unfair Competition Act

Both before the amendment of the IPL (article 286 [1](2)), as well as at present – after the amendment which entered into force on 27^th February 2020, the entitled person may, on the basis of Article 286 [2](4) of the IPL demand information concerning: the business names and addresses of producers, manufacturers, distributors, suppliers and other former holders of the goods or providers of the services that infringe a patent, supplementary protection, protection or a right in registration, and also expected wholesale recipients or persons carrying on the retail sale of such goods or services as well as the quantity of goods or services produced, manufactured, sold, received or ordered that infringe a patent, supplementary protection, protection or a right in registration, and also the prices paid for these goods or services. On the side note, it is worth to mention that this catalogue will be slightly extended after the amendment of the Code of Civil Procedure (hereinafter: “CCP”) – after 1 July 2020.

Protection of business secret under Industrial Property Law

Above information may constitute a business secret. Its protection was initially regulated by Art. 286 [1](3) of the IPL by obliging the court to ensure the maintenance of the business secret and other secrets protected by law, when admitting evidence or examining information claims[2]. This provision has been modified to some extend and now has the following wording: “the court shall examine the information claim, at a hearing, ensuring the maintenance of business secrets and other secrets protected by law”[3] .

Despite the numerous doubts as to the interpretation of the above mentioned provision, what is important, is that in no way it specifies actions that the court is obliged to take in order to ensure secrecy.

Albeit certain measures that may be taken by the court exists, on the grounds, inter alia, the provisions of the CCP, for example limiting the circle of entities entitled to familiarise themselves with the case files.[4] The Code also introduces the possibility to hold a hearing in camera when according to the circumstances a party’s business secret may be disclosed[5], however, this institution entirely dependents on the action undertaken by the party- submitting an appropriate motion. There is no analogous institution that would allow the court to hold a hearing in camera of its own initiative.

As for the protection measures that may be undertaken by the party obliged to provide information, until 27^th February 2020, there were no provisions in the IPL that would allow these entities to demand compensation for damage caused by the misuse of the information provided, both directly or by reference to apply them accordingly. Undoubtedly, the purpose of the information claim is to allow right holders whose rights were infringed to determine the amount of damage suffered in connection with said infringement. Nevertheless, very often the parties to the dispute conduct competitive business activities. Therefore, it is important to prevent, at the same time ensuring a sufficiently high level of protection of the right holders, unauthorised use of information which qualifies as a business secret.

A solution for the above presented issue was brought in IPL amendment by adding paragraph “where the information referred to in paragraphs 1 and 2 is used by the entitled party for purposes other than the enforcement of the claim, the provider of the information referred to in paragraphs 1 and 2 shall be entitled to claim compensation for damage caused by the performance of the obligation to provide information, on general terms”[6].

It should be emphasized that such a regulation is valid only until 1 July 2020, and with the amended CCP coming into force at that time, new institutions will be introduced to complement the issue in question.

[1] Art. 11(2) Unfair Competition Act (Dz.U. z 2019 r. poz. 1010)

[2] Art. 286 [1] (3)Industrial Property Act (Dz.U. z 2017 r. poz. 776)

[3] Art. 286 [2] (5) Industrial Property Act (Dz.U. z 2020 r. poz. 286)

[4] Art. 9 § 1 Civil Procedure Code (Dz.U. z 2019 r. poz. 1460)

[5] Art. 153 § 1[1] Civil Procedure Code (Dz.U. z 2019 r. poz. 1460)

[6] Art. 286 [2] (11) Industrial Property Law (Dz.U. z 2020 r. poz. 286)