AUSTRALIA Law and Practice Contributed by: John Lee, Siabon Seet, Vanessa Farago-Diener and Irini Lantis, Gilbert + Tobin
1.10 Licensing As a trade secret is not a proprietary right, it cannot be assigned or licensed in and of itself. To achieve functional exclusivity, and effect a transfer of trade secrets, entities typically enter into an agreement that requires the original trade secret owner to: (i) disclose the trade secret, typically in an agreed form; and (ii) contractually agree to strict obligations of confidenti - ality not to use or allow others to use the trade secret going forward. Subject to the terms of the contract, once assigned or licensed, the assignee or exclusive licensee may enforce its right in the trade secret against others. Where a trade secret owner has granted an exclusive licence to use its trade secrets, both parties will be required to safeguard the secrecy of the information to ensure that trade secret status is not lost. Where a document is both a copyrighted “work” and discloses trade secrets, it is common to take assign - ment of the copyright in the work. 1.11 What Differentiates Trade Secrets From Other IP Rights Trade secret and confidential information protection differs from other forms of IP right protection in Aus - tralia, as there is no relevant statutory or regulatory regime governing the protection of trade secrets and confidential information in Australia like those which exist for other forms of IP; eg, patents, trade marks, designs, copyright and plant breeders’ rights. The absence of any relevant statutory or regulatory regime means that there is no prescribed duration for trade secret protection (in contrast to other forms of IP) and there is no registration process (such as exists for, eg, patents, designs and trade marks). 1.12 Overlapping IP Rights It is not uncommon in Australia to assert trade secret rights in conjunction with a claim of copyright owner - ship. For example, internal documents relating to the design of an electronic gaming machine can attract both protection as a “work” under the Copyright Act 1968 (Cth) and as a trade secret. If the information is taken by an employee, claims for breach of contract,
Best practice in Australia is to have detailed IP poli - cies and procedures and express terms in employ - ment contracts. 1.7 Independent Discovery Trade secret protection is not the optimum innovation strategy for technologies that can be reverse engi - neered or independently developed. In Australia, com - panies with technology which can be readily reverse engineered would ordinarily seek patent protection. 1.8 Computer Software, Artificial Intelligence and Technology There are no specific protections for trade secrets in Australia based on the technology in issue. Rather, the same protections discussed in 1.1 Sources of Legal Protection for Trade Secrets apply. In Australia, computer software, including source code and object code, is protected under copyright law as a “literary work”, provided it meets the strict criteria of human authorship. If a trade secret owner believes that there has been a misappropriation of its computer software, in addition to claims available for breach of trade secrets, the owner will also have a claim under copyright law. Australian law is still developing around AI. There is currently no specific legislation in Australia relating to AI. In order for AI-generated works to be protected under copyright law, the work would need to meet the test of human authorship, which is unlikely. 1.9 Duration of Protection for Trade Secrets Trade secret and confidential information protection will last as long as the information remains outside of the public domain or unless otherwise specified in contractual provisions. So long as disclosure of the information which con - stitutes the trade secret or confidential information is under an obligation of confidence, whether implied such as in an employee contract or express such as under a non-disclosure agreement, protection will remain. Generally, the older the information in issue, the more difficult it will be for the owner to establish that it has remained confidential and not entered the public domain.
12 CHAMBERS.COM
Powered by FlippingBook