AUSTRALIA Law and Practice Contributed by: John Lee, Siabon Seet, Vanessa Farago-Diener and Irini Lantis, Gilbert + Tobin
their duty or involve an opposition or conflict between their interest and their duty to their employer. In addition to the implied obligations in an employ - ment contract, including express terms for the own - ership and treatment of IP in employment contracts provides further protection for employers. 2.3 Joint Ventures Obligations between joint venturers in relation to trade secrets will usually be covered in the contractual arrangements between the parties. It is common in Australia for joint-venture agreements to: • distinguish between background IP and project IP; • include obligations not to disclose the other par - ties’ confidential information; • identify who owns project-specific IP; and • how project-specific IP can be used. 2.4 Industrial Espionage Claims of industrial espionage in Australia will proceed in the same manner as any other proceedings relat - ing to trade secrets. The types of claims available will depend upon the specific facts of the case, includ - ing whether the trade secrets were taken by a former employee or business partner. In considering the appropriate remedy to award a successful plaintiff, the court will have regard to the conduct of the defendant, including whether there was an intentional breach of confidential information, which can lead to exemplary damages (in the case of a breach of contract) and a broader form of injunction. 3. Preventing Trade Secret Misappropriation 3.1 Best Practices for Safeguarding Trade Secrets As protection of trade secrets in Australia relies princi - pally on contractual and equitable obligations, the fol - lowing contractual tools are recognised as important in safeguarding a business’ confidential information and trade secrets across all industries.
• Use of non-disclosure agreements prior to disclos - ing confidential information and trade secrets. • Use of confidentiality clauses in both employment and business contracts. • Non-compete clauses in employment contracts to limit former employees from engaging in competi - tive activities. • Exclusivity clauses in business contracts to restrict the sharing of information. In addition to contractual tools, other best practices commonly used in Australia to safeguard a business’ confidential information and trade secrets include the following. • Locking down a business’ IP and confidential infor - mation and limiting access to a “need to know” basis. • Restricting physical access to specific locations such as laboratories. • Restricting access to online systems, such as files, to only those employees working on specific projects. • Undertaking a review of an employee’s recent data history and IT access upon resignation. 3.2 Exit Interviews Exit interviews will be dependent on the employer and will vary across Australia. Typically, an exit interview will include questions as to the nature of the employ - ee’s new position and the company the employee is moving to so as to determine whether any non-com - pete restrictions in the employment contract apply. It is not typically the case that an employer in Australia will require a departing employee to provide written assurance in relation to confidential information and trade secrets. However, employers typically provide an exit letter reminding the departing employee of their ongoing obligations regarding non-disclosure of confidential information and trade secrets.
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