POLAND Trends and Developments Contributed by: Szymon Gogulski, Marek Oleksyn and Maciej Gil, Sołtysiński Kawecki & Szlęzak
such professional representation obligations due to the low complexity of the case; • the primacy of these IP-specific procedural rules over other specific CPC regulations which may also apply to IP litigation, in the event of inconsist - encies; and • the competence of IP courts to qualify a given mat - ter as an IP case, which qualification is binding on other courts. Although there are no official statistics on the increase in cases before IP courts concerning trade secret pro - tection, the number of cases brought before these courts under the UCL is steadily growing – trade secret protection forming an important part of unfair competition legislation. This means that businesses operating in Poland, both domestic and international, are becoming increasingly aware of the key impor - tance of trade secret protection for their operations and competitiveness. Continued steady growth in this type of case before the IP courts may be expected in the years to come. New Technologies and Innovations: Trade Secret as a Key Asset in M&A Transactions Over the past few years, there has been a clear trend regarding the key assets and components of busi - nesses being acquired in M&A transactions in Poland. This trend consists of increasingly frequent transac - tions in which new technologies and innovations (rather than traditional fixed assets) constitute the essence of the transaction. These new technologies and innovations, in turn, are increasingly and more significantly protected by trade secret rights, includ - ing technical and technological know-how. This trend triggers several practical consequences: • for the sell-side – the management of innovative businesses operating in Poland needs to ensure strict compliance with the statutory requirements under the UCL and the Trade Secrets Directive, so as to maintain sufficient legal protection of their trade secrets and preserve the value of the busi - ness to be sold; • for the buy-side – M&A projects involving innova - tive businesses should be led by, or should include, teams and lawyers specialising in the protection of trade secrets and confidential know-how, in order
to minimise the risks associated with insufficient protection measures in respect of the target’s trade secrets; and • for both sides – the due diligence and transaction process should be organised in a way that pre - vents any trade secrets of the target business from being disclosed. Rights to Trade Secrets in Cross-Border Technology Transfer Projects One of the clear indicators of the growing involve - ment of entrepreneurs in Poland in the development of innovation and new technologies is the increas - ing number of projects related to technology transfer (including assignment and licence agreements), which are frequently cross-border or even global in nature. The technology in question is often protected by vari - ous IP rights, including rights to technical or techno - logical know-how. While such technology transfer agreements are gov - erned by the law chosen by the contracting parties, the effectiveness of a cross-border assignment or licence of the relevant IP rights is, in principle, subject to the laws of each respective jurisdiction (country) in which a given IP right is being used. This means that cross-border technology transaction projects often require verifying the IP transfer prerequisites in at least the key territories, and the co-operation of counsel from various jurisdictions. Trade Secret Protection and Relations With Current and Former Personnel One of the most sensitive areas of a business’s opera - tions in terms of trade secret protection is its legal (including contractual) relationship with its staff. Both case law in Poland and the recitals of the Trade Secrets Directive emphasise a subtle yet important distinction between the trade secrets of a given business and the experience and skills of its personnel. At the same time, among trade secrets disputes, those involving former personnel are the most common. Moreover, unlike the statutory rules concerning the creation of a copyrightable work or the making of an invention or design as a result of the performance of contractual duties by personnel, there are no equivalent statutory rules with respect to the assignment to an employer of trade secrets rights (including technical or techno -
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