The Trade Secrets (Enforcement, etc.) Regulations 2018

JurisdictionUK Non-devolved
CitationSI 2018/597

2018 No. 597

Intellectual Property

The Trade Secrets (Enforcement, etc.) Regulations 2018

Made 15th May 2018

Laid before Parliament 18th May 2018

Coming into force 9th June 2018

The Secretary of State is a Minister designated for the purposes of section 2(2) of the European Communities Act 19721in relation to intellectual property (including both registered and unregistered rights)2.

The Secretary of State, in exercise of the powers conferred by section 2(2) of that Act, makes the following Regulations.

S-1 Citation, commencement and extent

Citation, commencement and extent

1.—(1) These Regulations may be cited as the Trade Secrets (Enforcement, etc.) Regulations 2018 and come into force on 9th June 2018.

(2) These Regulations extend to England and Wales, Scotland and Northern Ireland.

S-2 Interpretation

Interpretation

2. For the purposes of these Regulations—

“court” means—

(a) in England and Wales, a County Court hearing centre where there is also a Chancery District Registry or the High Court (as provided for in rule 63.13 of the Civil Procedure Rules 19983),

(b) in Scotland, the sheriff or the Court of Session, and

(c) in Northern Ireland, a county court or the High Court;

“infringer” means a person who has unlawfully acquired, used or disclosed a trade secret;

“infringing goods” means goods, the design, functioning, production process, marketing or a characteristic of which significantly benefits from a trade secret unlawfully acquired, used or disclosed;

“trade secret” means information which—

(a) is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among, or readily accessible to, persons within the circles that normally deal with the kind of information in question,

(b) has commercial value because it is secret, and

(c) has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret;

“trade secret holder” means any person lawfully controlling a trade secret.

S-3 Wider protection

Wider protection

3.—(1) The acquisition, use or disclosure of a trade secret is unlawful where the acquisition, use or disclosure constitutes a breach of confidence in confidential information.

(2) A trade secret holder may apply for and a court may grant measures, procedures, and remedies available in an action for breach of confidence where the measures, procedures and remedies—

(a)

(a) provide wider protection to the trade secret holder than that provided under these Regulations in respect of the unlawful acquisition, use or disclosure of a trade secret, and

(b)

(b) comply with the safeguards referred to in Article 1 of Directive (EU) 2016/943 of the European Parliament and of the Council of 8 June 2016 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure4.

(3) A trade secret holder may apply for and a court may grant the measures, procedures and remedies referred to in paragraph (2) in addition, or as an alternative, to the measures procedures and remedies provided for in these Regulations in respect of the unlawful acquisition, use or disclosure of a trade secret.

S-4 Time limits for bringing proceedings

Time limits for bringing proceedings

4.—(1) Proceedings may not be brought before a court in respect of a claim for the unlawful acquisition, use or disclosure of a trade secret and for the application of measures, procedures and remedies provided for under these Regulations—

(a)

(a) in England and Wales and Northern Ireland, after the end of the limitation period for the claim, and

(b)

(b) in Scotland, after the end of the prescriptive period for the claim, except where the subsistence of the obligation in relation to which the claim is made was relevantly acknowledged before the end of that period.

(2) The limitation period referred to in paragraph 1(a) is to be determined in accordance with this regulation and regulations 5 to 7 and 9.

(3) Section 36 of the Limitation Act 19805(equitable jurisdiction and remedies) does not apply in relation to proceedings in respect of a claim for the unlawful acquisition, use or disclosure of a trade secret.

(4) The prescriptive period referred to in paragraph 1(b) is to be determined in accordance with this regulation and regulations 5, 6 and 8.

(5) Section 6 of the Prescription and Limitation (Scotland) Act 19736(extinction of obligations by prescriptive periods of five years) does not apply in relation to an obligation arising from a claim for the unlawful acquisition, use or disclosure of a trade secret.

(6) The following provisions of the Prescription and Limitation (Scotland) Act 1973 apply for the purposes of, or in relation to, paragraph (1)(b) as they apply for the purposes of, or in relation to, section 6 of that Act—

(a)

(a) section 10 (relevant acknowledgment);

(b)

(b) section 13 (prohibition of contracting out);

(c)

(c) section 14(1)(c) and (d) (computation of prescriptive periods).

S-5 Length of limitation or prescriptive period

Length of limitation or prescriptive period

5.—(1) The limitation period is six years.

(2) The prescriptive period is five years.

(3) The limitation or prescriptive period begins with the day specified in regulation 6.

S-6 Beginning of limitation or prescriptive period

Beginning of limitation or prescriptive period

6.—(1) The limitation or prescriptive period for a claim for the unlawful acquisition, use or disclosure of a trade secret against an infringer begins with the later of—

(a)

(a) the day on which the unlawful acquisition, use or disclosure that is the subject of the claim ceases, and

(b)

(b) the day of knowledge of the trade secret holder.

(2) In paragraph (1)(b), “the day of knowledge of the trade secret holder” is the day on which the trade secret holder first knows or could reasonably be expected to know—

(a)

(a) of the infringer’s activity,

(b)

(b) that the activity constitutes an unlawful acquisition, use or disclosure of a trade secret, and

(c)

(c) the identity of the infringer.

(3) The reference in paragraph (2) to the trade secret holder knowing something is to the trade secret holder having sufficient knowledge of it to bring a claim for the unlawful acquisition, use or disclosure of a trade secret.

(4) Where a person has acquired the liability of an infringer from another person (whether by operation of law or otherwise)—

(a)

(a) the reference to an infringer in paragraph (1) is to be read as a reference to the person who has acquired the liability, but

(b)

(b) the references to the infringer in paragraph (2) are to be read as references to the original infringer.

(5) This regulation has effect subject to—

(a)

(a) regulation 7 in relation to the limitation period, and

(b)

(b) regulation 8 in relation to the prescriptive period.

S-7 Effect of disability on limitation period

Effect of disability on limitation period

7.—(1) If, in relation to a claim in England and Wales and Northern Ireland for the unlawful acquisition, use or disclosure of a trade secret, the trade secret holder is under a disability during the whole or any part of the limitation period, the limitation period for the claim begins with the earlier of—

(a)

(a) the day on which the trade secret holder ceases to be under a disability, and

(b)

(b) the day on which the trade secret holder dies.

(2) In England and Wales, references in paragraph (1) to a person being “under a disability” have the same meaning as in section 38(2) of the Limitation Act 1980 (interpretation).

(3) In Northern Ireland, references in paragraph (1) to a person being “under a disability” have the same meaning as in article 47 of the Limitation (Northern Ireland) Order 19897(persons under a disability).

S-8 Suspension of prescriptive period during period of disability

Suspension of prescriptive period during period of disability

8.—(1) If, in relation to a claim in Scotland for the unlawful acquisition, use or disclosure of a trade secret, the trade secret holder is under legal disability for a period at any time, the period during which the trade secret holder is under legal disability—

(a)

(a) is not to be counted when calculating whether the prescriptive period for the claim has expired, and

(b)

(b) is not to be regarded as separating the time immediately before it from the time immediately after it.

(2) In paragraph (1), “legal disability” has the same meaning as in section 15(1) of the Prescription and Limitation (Scotland) Act 1973 (interpretation).

S-9 New claims in pending actions: England and Wales and Northern Ireland

New claims in pending actions: England and Wales and Northern Ireland

9. For the purposes of regulations 4 to 7—

(a) section 35 of the Limitation Act 1980 (new claims in pending action) applies in relation to a claim for the unlawful acquisition, use or disclosure of a trade secret that is a new claim and to proceedings for the unlawful acquisition, use or disclosure of a trade secret as it applies in relation to new claims and proceedings for the purposes of that Act; and

(b) Article 73 of the Limitation (Northern Ireland) Order 1989 (new claims in pending actions) applies in relation to a claim for the unlawful acquisition, use or disclosure of a trade secret that is a new claim and to proceedings for the unlawful acquisition, use or disclosure of a trade secret as it applies in relation to new claims and proceedings for the purposes of that Order.

S-10 Preservation of confidentiality of trade secrets in the course of proceedings

Preservation of confidentiality of trade secrets in the course of proceedings

10.—(1) A participant, or a participant who has access to documents which form part of the proceedings, must not use or disclose any trade secret or alleged trade secret—

(a)

(a) which, on a duly reasoned application by an interested party or on a court’s own initiative, a court by order identifies as...

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