Definitive global law guides offering comparative analysis from top-ranked lawyers
CHAMBERS GLOBAL PRACTICE GUIDES
Trade Secrets 2026 Definitive global law guides offering comparative analysis from top-ranked lawyers
Contributing Editors Claudia Ray & Joseph A. Loy Kirkland & Ellis LLP
Global Practice Guides
Trade Secrets Contributing Editors Claudia Ray and Joseph Loy Kirkland & Ellis LLP
2026
Chambers Global Practice Guides For more than 20 years, Chambers Global Guides have ranked lawyers and law firms across the world. Chambers now offer clients a new series of Global Practice Guides, which contain practical guidance on doing legal business in key jurisdictions. We use our knowledge of the world’s best lawyers to select leading law firms in each jurisdiction to write the ‘Law & Practice’ sections. In addition, the ‘Trends & Developments’ sections analyse trends and developments in local legal markets. Disclaimer: The information in this guide is provided for general reference only, not as specific legal advice. Views expressed by the authors are not necessarily the views of the law firms in which they practise. For specific legal advice, a lawyer should be consulted. Content Management Director Claire Oxborrow Content Manager Jonathan Mendelowitz Senior Content Reviewers Sally McGonigal, Ethne Withers, Deborah Sinclair, Stephen Dinkeldein, Vivienne Button and Sean Marshall Content Reviewers Lawrence Garrett, Marianne Page, Heather Palomino, Alison Moore, Adrian Ciechacki and Michael Irvine Content Coordination Manager Nancy Tsang Senior Content Coordinators Carla Cagnina and Delicia Tasinda Content Coordinator Joanna Chivers Head of Production Jasper John Production Coordinator Genevieve Sibayan
Published by Chambers and Partners 165 Fleet Street London EC4A 2AE Tel +44 20 7606 8844 Fax +44 20 7831 5662 Web www.chambers.com
Copyright © 2026 Chambers and Partners
Contents
INTRODUCTION Contributed by Claudia Ray, Joseph Loy, Josh Berlowitz and Andrew (Keum Yong) Lee, Kirkland & Ellis LLP p.4
USA Law and Practice p.152
Contributed by Kirkland & Ellis LLP Trends and Developments p.171 Contributed by Seyfarth Shaw LLP
AUSTRALIA Law and Practice p.8 Contributed by Gilbert + Tobin Trends and Developments p.25 Contributed by Gilbert + Tobin
USA – CALIFORNIA Trends and Developments p.177 Contributed by Tensegrity Law Group LLP USA – D.C. METROPOLITAN AREA Trends and Developments p.182 Contributed by ArentFox Schiff LLP USA – DELAWARE Trends and Developments p.190 Contributed by Richards, Layton & Finger PA
CHINA Law and Practice p.33 Contributed by CCPIT Patent and Trademark Law Office
Trends and Developments p.47 Contributed by AllBright Law Offices CHINA – BEIJING Trends and Developments p.52 Contributed by Jingtian & Gongcheng CHINA – SHENZHEN Trends and Developments p.59 Contributed by Zhong Lun Law Firm INDIA Law and Practice p.64 Contributed by Anand and Anand
USA – ILLINOIS Trends and Developments p.197 Contributed by ArentFox Schiff LLP
USA – MASSACHUSETTS Trends and Developments p.204 Contributed by Weil, Gotshal & Manges LLP USA – MINNESOTA Trends and Developments p.209 Contributed by Ciresi Conlin LLP USA – NEW JERSEY Trends and Developments p.215 Contributed by Greenberg Traurig, LLP
ITALY Law and Practice p.84 Contributed by GA-Alliance Trends and Developments p.103 Contributed by GA-Alliance JAPAN Law and Practice p.107 Contributed by Abe, Ikubo & Katayama Trends and Developments p.122 Contributed by Abe, Ikubo & Katayama POLAND Law and Practice p.130 Contributed by Sołtysiński Kawecki & Szlęzak Trends and Developments p.148 Contributed by Sołtysiński Kawecki & Szlęzak
USA – PENNSYLVANIA Trends and Developments p.221 Contributed by Blank Rome LLP
USA – TEXAS Trends and Developments p.228 Contributed by Weil, Gotshal & Manges LLP
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INTRODUCTION
Contributed by: Claudia Ray, Joseph Loy, Josh Berlowitz and Andrew (Keum Yong) Lee, Kirkland & Ellis LLP
Kirkland & Ellis LLP is an international law firm with more than 3,500 attorneys across the USA, Europe and Asia. Kirkland’s trade secrets litigation practice includes approximately 100 attorneys with years of experience representing both plaintiffs and defend - ants in trade secrets matters in diverse industries. They draw upon the depth of Kirkland’s intellectual property, commercial litigation and other practices to provide an approach tailored to each individual case. Kirkland’s trade secrets attorneys have litigated a broad spectrum of trade secret disputes, ranging
from outright theft to violation of various agreements including employment, R&D, joint development, and technology transfer and know-how agreements. They have won significant victories for clients in these mat - ters in UK courts, US federal and state courts, and arbitrations, and have worked collaboratively with law enforcement agencies to protect clients’ IP. The practice’s success is grounded in extensive jury and bench trial experience, and a sophisticated appellate practice to protect clients’ successes at the trial level.
Contributing Editors
Claudia Ray is a partner in Kirkland’s intellectual property practice group. She represents clients in litigation, arbitration and administrative proceedings involving trade secret, copyright, trade mark, internet and
Joseph Loy is a partner in Kirkland’s intellectual property practice group. His practice focuses on trade secret and patent infringement disputes before federal trial and appellate courts nationwide. His trade secret
contract/licensing issues across a wide range of industries. Her trade secret practice includes litigation and counselling relating to software, technology, financial services and consumer products. Claudia also serves on the Intellectual Property and Technology Advisory Committee of the American Arbitration Association and the Bulletins Committee of the International Trademark Association, and is the chair of the Copyright Law Committee of the Association of the Bar of the City of New York.
work includes both offensive and defensive litigation and corporate counselling. Joe has represented clients in cases involving a wide range of industries, including autonomous vehicles, biotechnology, computer hardware and software, cruise ships, digital photography, exercise equipment, mattresses, medical devices, oil drilling, petrochemicals, pharmaceuticals, robotics, smartphones, wireless communications, and vehicle telematics. He is a frequent commentator on trade secret issues before intellectual property Bar associations and law school communities.
Co-Authors
Josh Berlowitz is an associate in Kirkland’s intellectual property practice group. His practice focuses on copyright, trade secret, trade mark, internet and advertising law.
Andrew (Keum Yong) Lee is an associate in Kirkland’s intellectual property practice group whose practice focuses on patent litigation.
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INTRODUCTION Contributed by: Claudia Ray, Joseph Loy, Josh Berlowitz and Andrew (Keum Yong) Lee, Kirkland & Ellis LLP
Kirkland & Ellis LLP 601 Lexington Avenue New York, NY 10022 USA Tel: +1 212 446 4800 Fax: +1 212 446 4900 Email: claudia.ray@kirkland.com Web: www.kirkland.com
Global Overview As businesses around the world evaluate their options for protecting valuable intellectual property in the con - text of today’s dynamic technological environment and highly mobile labour force, trade secret protection can be an essential complement to patent, copyright and trade mark protections. This is particularly true in the USA in light of recent developments in the patent system – including shift - ing judicial standards for patent-eligible subject mat - ter and the increased availability of post-grant chal - lenges at the patent office – that have increased the importance of trade secret protection as an alternative vehicle for protecting intellectual property. Moreover, as the developed world continues its shift from a manufacturing economy to a knowledge-based one, where the most rapidly growing sectors offer software and services, trade secret laws are more relevant than ever. Artificial Intelligence in Full Force Generative artificial intelligence (AI) is here to stay. Various industries have begun using large language models (LLMs) to analyse big data, create work prod - ucts and even innovate by developing novel ideas or inventions. AI applications and LLMs raise several issues for trade secret protection. First, they may capture and store information that may be used to train and enhance the AI’s ability to generate results. If one were to input a trade secret into an AI application or LLM prompt, the trade secret could be at risk of unintended exposure to the company behind the AI application depend -
ing on the terms of the application’s end-user licence agreement. This concern is particularly salient in light of the expanded use of generative AI in the workplace, which has resulted in disclosures of trade secrets through ChatGPT and Sundstrom’s leak of confi - dential meeting notes and data through the AI tool “Otter”. Furthermore, creators of some of the largest generative AI applications, such as OpenAI, preserve the ability to review inputs provided by users and potentially disclose such inputs to affiliates or third parties. Second, the trade secret could be used as a training input for other problems or prompts, result - ing in potential exposure to other end users of the AI application. Third, trade secrets stored by the AI appli - cation, which often occurs based on AI applications’ storage of training inputs provided by their users, may be at risk of exposure from security breaches target - ing the companies behind the AI application. Each of these issues will push trade secret owners to imple - ment new ways to safeguard their trade secrets, such as updating employment agreements, drafting internal AI-use policies that limit the ways in which employees may use generative AI, training employees in light of such updated policies and agreements and carefully negotiating with companies behind AI applications to limit the use or accessibility of trade secret inputs. Alternative arrangements to enable greater trade secret protection may include the purchase or devel - opment of an internal generative AI application or use of custom non-disclosure agreements for generative AI tools. Another evolving interaction between generative AI and trade secret protection concerns scenarios in which generative AI itself produces trade secrets. Unlike patent and copyright protection, trade secret
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INTRODUCTION Contributed by: Claudia Ray, Joseph Loy, Josh Berlowitz and Andrew (Keum Yong) Lee, Kirkland & Ellis LLP
protection is not limited to human inventors, and the broad definition of “trade secret” may enable protec - tion of entire AI platforms, training algorithms, inputs and outputs. The scope of protection for AI-generated trade secrets remains largely unexplored, however, and hinges on issues such as: • the extent to which designers of an AI system hold trade secret rights as to algorithms that have evolved in a way that the designers cannot articu - late; • the impact of such lack of knowledge on trade secret misappropriation claims and recoverable damages; and • the evolving efforts to define transparency in AI. Shifts in Employment Practices Chambers Trade Secrets Global Practice Guide 2026 focuses on best practices for protecting trade secrets and avoiding the pitfalls of encroaching on others’ trade secret rights. A key area to which trade secret owners must remain alert is the use of technologi - cal and other protections to safeguard their valuable intellectual property. Recent decades have seen a sea of change in the way employers recruit and maintain their workforce, including hiring a substantial number of remote employees, increased use of independ - ent contractors and the rise of the “gig” economy, in which an ever-rotating cast of independent work - ers may have access to the company’s confidential information. On top of these existing trends, shifts to hybrid and/or fully remote workplaces, even as many sectors make a push to return to traditional office-based employ - ment, require balancing agility and innovation with appropriate confidentiality controls. The increased focus on remote work underscores the need to create sophisticated confidentiality measures to protect trade secrets without impairing the ready interchange of ideas and information in collaborative work environments, which may be necessary to pro - mote the very innovation that generates trade secrets. Long gone are the days when a company could simply lock its crown jewels in a vault and rest easy knowing its trade secrets were safe.
In addition to the lasting shift away from traditional workplaces, lawmakers around the world have dem - onstrated increasing aversion to non-compete agree - ments. While these changes would result in an even more mobile workforce that may choose to pursue new opportunities and leverage experiences from prior companies, they also cause the risk of misap - propriation to grow. Employees may feel incentivised to use knowledge and insight gained at prior employ - ers to differentiate themselves in a new job. Without adequate training and precautions, the line between acquired skills and acquired confidential information could blur. New employers (whether leanly staffed start-ups or global heavyweights) should implement stringent procedures for insulating themselves from others’ confidential information, while former employ - ers must remain vigilant in safeguarding the improper use of their hard-earned property or risk losing it to competitors. Litigation and ADR Because disputes over trade secrets arise even when such precautions are taken, chapters in this guide explore the latest trends in trade secret litigation and alternative dispute resolution (ADR) proceedings. Given the high stakes for both sides in a trade secret dispute, it will be important for counsel to consider the full spectrum of offensive and defensive resources that may be available under statutory and common law misappropriation laws and advise clients accord - ingly – whether that entails implementing procedures for effectively maintaining the confidentiality of trade secrets or minimising the risk of coming into the pos - session of or using a competitor’s trade secrets. Increasing Prevalence of DTSA Lawsuits In the USA, just as the Uniform Trade Secret Act dis - placed nearly all state-specific common law misap - propriation schemes, providing a theoretically uni - form body of law across the many states, Congress enacted the Defend Trade Secrets Act (DTSA) in 2016, building on earlier federal economic espionage stat - utes to create a federal system of trade secret law. Now that the first wave of DTSA cases has made its way through the federal courts, greater uniformity and certainty on key issues is beginning to be seen.
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INTRODUCTION Contributed by: Claudia Ray, Joseph Loy, Josh Berlowitz and Andrew (Keum Yong) Lee, Kirkland & Ellis LLP
As explored in this Global Practice Guide, a robust body of case law is developing on topics such as pleading requirements, the required particularity for descriptions of trade secrets in discovery, liability based on conduct predating the enactment of the DTSA and allowable measures of damages. The enactment of the DTSA, not surprisingly, has resulted in a significant uptick in federal filings, as trade secret owners seek to benefit from the perceived uniformity and predictability of the federal courts. Moving for - ward, counsel should keep up to date with the latest developments in DTSA litigation, which is proving to be an indispensable part of every trade secret owner’s toolkit. International Considerations Protecting trade secrets internationally continues to be dynamic and unpredictable. Courts in the USA are just beginning to grapple with issues of liability and damages based on conduct occurring overseas, while many foreign jurisdictions are themselves still devel - oping their trade secret jurisprudence. Global busi - nesses must navigate the laws of each country and territory on a case-by-case basis and make informed decisions about how to safeguard trade secrets local - ly as well as centrally, to ensure that they do not inad - vertently lose global protection for failure to comply with a single foreign law.
Trade secret owners conducting business in the USA should also not forget that the US International Trade Commission (ITC) can conduct investigations and rec - ommend prohibitions against importing articles based on the theft of trade secrets. Although there was a long lull in such investigations, there has been a surge in investigations and enforcement actions at the ITC in recent years. As a result, companies doing business globally should stay apprised of the latest developments in litigation involving international parties, whether in the federal court system, at the ITC or globally – that part, the authors assure you, is not a secret.
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AUSTRALIA
Australia
Law and Practice Contributed by: John Lee, Siabon Seet, Vanessa Farago-Diener and Irini Lantis Gilbert + Tobin Contents 1. Legal Framework p.10 1.1 Sources of Legal Protection for Trade Secrets p.10 1.2 What Is Protectable as a Trade Secret p.11 1.3 Examples of Trade Secrets p.11 1.4 Elements of Trade Secret Protection p.11
Sydney
Tasmania
6. Trial p.18 6.1 Bench or Jury Trial p.18 6.2 Trial Process p.18 6.3 Use of Expert Witnesses p.18 7. Remedies p.19 7.1 Preliminary Injunctive Relief p.19 7.2 Measures of Damages p.19 7.3 Permanent Injunction p.20 7.4 Attorney’s Fees p.20
1.5 Reasonable Measures p.11 1.6 Disclosure to Employees p.11 1.7 Independent Discovery p.12 1.8 Computer Software, Artificial Intelligence and Technology p.12 1.9 Duration of Protection for Trade Secrets p.12 1.10 Licensing p.12 1.11 What Differentiates Trade Secrets From Other IP Rights p.12
7.5 Costs p.20 8. Appeal p.21 8.1 Appellate Procedure p.21 8.2 Factual or Legal Review p.21 9. Criminal Offences p.22 9.1 Prosecution Process, Penalties and Defences p.22 10. ADR p.23 10.1 Dispute Resolution Mechanisms p.23
1.12 Overlapping IP Rights p.12 1.13 Other Legal Theories p.13
1.14 Criminal Liability p.13 1.15 Extraterritoriality p.13 2. Misappropriation of Trade Secrets p.13 2.1 The Definition of Misappropriation p.13 2.2 Employee Relationships p.13 2.3 Joint Ventures p.14 2.4 Industrial Espionage p.14
3. Preventing Trade Secret Misappropriation p.14 3.1 Best Practices for Safeguarding Trade Secrets p.14 3.2 Exit Interviews p.14 4. Safeguarding Against Allegations of Trade Secret Misappropriation p.15 4.1 Pre-Existing Skills and Expertise p.15 4.2 New Employees p.15 5. Trade Secret Litigation p.15 5.1 Prerequisites for Filing a Lawsuit p.15
5.2 Limitations Period p.15 5.3 Initiating a Lawsuit p.15
5.4 Jurisdiction of the Courts p.15 5.5 Initial Pleading Standards p.16 5.6 Seizure Mechanisms p.16
5.7 Obtaining Information and Evidence p.16 5.8 Maintaining Secrecy While Litigating p.17 5.9 Defending Against Allegations of Misappropriation p.17
5.10 Dispositive Motions p.17 5.11 Cost of Litigation p.17
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AUSTRALIA Law and Practice Contributed by: John Lee, Siabon Seet, Vanessa Farago-Diener and Irini Lantis, Gilbert + Tobin
Gilbert + Tobin is a leading Australian law firm, with approximately 118 partners and over 700 lawyers across its offices in Sydney, Melbourne and Perth. The firm’s trade secrets practice comprises four part - ners and two special counsel, supported by its IP, commercial litigation, and other practice groups to deliver practical and tailored legal support in clients’ high-stakes matters. The team has extensive expe - rience advising leading domestic and international companies across sectors including consumer elec -
tronics, entertainment, software, fast-moving con - sumer goods, mining, and financial services. Gilbert + Tobin maintains a strong commercial focus and a deep understanding of how to protect confidential information and trade secrets in preserving clients’ competitive advantage. The firm has achieved no - table successes for clients in the Australian Federal Court and has worked collaboratively with relevant parties in cross-border disputes to safeguard clients’ critical IP assets.
Authors
John Lee is a partner in Gilbert + Tobin’s technology and IP group, specialising in patents and trade secrets. His practice spans complex cross-border disputes across digital technologies, telecommunications,
Vanessa Farago-Diener is a special counsel in Gilbert + Tobin’s technology and IP group. She is an experienced IP litigator who works closely with clients across a range of industries including health and life
life sciences, and engineering. John has achieved outstanding results in Federal Court litigation, including a record damages award in an Australian patent case. He has acted on high-profile trade secret matters, recently obtaining an urgent Anton Piller search and seizure order against an ex-employee. John also advised Aristocrat throughout its landmark eight-year patent eligibility litigation, which reached the High Court and is considered among Australia’s most significant IP cases.
sciences, mining and resources, energy, government, technology, defence and software. Vanessa’s practice covers contentious and non- contentious aspects of IP law, with a particular focus on patent litigation and trade secrets/confidential information. Her work with clients involves the entire IP life cycle from the initial innovation stage to IP protection, commercialisation and enforcement of intellectual property rights. Vanessa is a member of IPSANZ and AIPPI.
Irini Lantis is a lawyer in Gilbert + Tobin’s technology and IP group. She is an IP litigator with extensive cross-jurisdictional patent litigation experience before the Federal Court and the High Court of Australia. She
Siabon Seet is a partner in Gilbert + Tobin’s technology and IP group. She also leads the brands litigation practice and is highly regarded as a leading IP litigator. Siabon has deep expertise across all areas of IP, with a
has also acted in high profile confidential information cases, where trade secrets have been unlawfully obtained in breach of obligations of confidence. Irini advises clients across all sectors, with a particular focus on e-commerce, gaming, life sciences, mining and resources.
particular focus on trade secrets and confidential information. She has a strong record of success in enforcement matters, acting for both Australian and global clients across a diverse range of industries. She is also known for her ability to craft innovative, commercially minded solutions to complex IP challenges. Siabon is a member of the Copyright Society of Australia, INTA and IPSANZ.
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AUSTRALIA Law and Practice Contributed by: John Lee, Siabon Seet, Vanessa Farago-Diener and Irini Lantis, Gilbert + Tobin
Gilbert + Tobin Level 35, Tower Two International Towers 200 Barangaroo Avenue Sydney, NSW 2000 Australia Level 22, 101 Collins Street Melbourne, VIC 3000 Australia Tel: +61 292 634 000 Fax: +61 292 634 111 Email: info@gtlaw.com.au Web: www.gtlaw.com.au
sure of confidential commercial information in a report following an investigation of an act or practice. The Freedom of Information Act 1982 (Cth) (FOI Act) allows access to documents and information held by the government. Such documents and information often include information about private companies provided, eg, in response to a tender or under a con - tract. The FOI Act includes an exemption for docu - ments that disclose trade secrets or commercially valuable information. Contracts Trade secrets can also be protected expressly through contractual terms that specifically establish that the information being disclosed is to be treated as con - fidential between the parties as well as implied in a contract, such as an employment agreement. Equitable Action In addition to the protections afforded by contract and statute, obligations of confidentiality also arise in Aus - tralia in equity, where: • information was received with the understanding that it would be treated confidentially; or • the recipient ought to have realised in all the cir - cumstances that the information was to be treated confidentially.
1. Legal Framework 1.1 Sources of Legal Protection for Trade Secrets Unlike other jurisdictions such as the UK, there is no relevant statutory or regulatory regime governing the protection of trade secrets in Australia. Rather, trade secrets are protected in Australia through vari - ous statutes which protect against the disclosure of confidential information by imposing an obligation of confidence, as well as in contracts and in equity. Statutory Sources The Corporations Act 2001 (Cth) (Corporations Act) provides that a person who obtains informa - tion because they are, or have been, a director or other officer or employee of a corporation must not improperly use the information to gain an advantage for themselves or someone else or cause detriment to the corporation. An individual’s obligations under the Corporations Act continue after that individual has stopped being an officer or employee. The Privacy Act 1988 (Cth) (Privacy Act) is the princi - pal Australian legislation governing the protection of personal information about individuals including the collection, use, storage and disclosure of personal information by entities in the public and private sec - tors. The Privacy Commissioner is required to have regard to the need to prevent the unreasonable disclo -
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AUSTRALIA Law and Practice Contributed by: John Lee, Siabon Seet, Vanessa Farago-Diener and Irini Lantis, Gilbert + Tobin
1.4 Elements of Trade Secret Protection An obligation of confidence will arise if it includes the following elements ( Dart Industries Inc v David Bryar & Associates Pty Ltd (1997), FCA 481). Firstly, the infor - mation must have the necessary quality of confidence and not be a matter of common knowledge or in the public domain. Secondly, the information must have been imparted in circumstances identifying an obli - gation of confidence. Additionally, the information in which confidentiality is claimed must be capable of being identified with a degree of specificity. 1.5 Reasonable Measures In Australia, a trade secret owner is required to take reasonable measures to keep the information secret in order for the information to qualify as a trade secret. A court will consider what measures the owner of the information took to guard the secrecy of the infor - mation; eg, by way of non-disclosure agreements, IT security measures, and controlling access to facilities. Courts have held, for example, that disclosure of infor - mation without imposing an obligation of confidence will mean that the information does not have the nec - essary quality of confidence and is therefore not a trade secret. Similarly, if the information is disclosed in a document – eg, a manual – that is not restricted, then the information does not have the necessary quality of confidence. In making an assessment as to whether a company took reasonable measures to protect its trade secrets, Australian courts will consider all the facts and circum - stances of the case, including, for example, the nature and scale of the company and type of information. 1.6 Disclosure to Employees In Australia, it is implied into all employment contracts that the employee will act with good faith towards their employer and that the employee has duties of confidence to their employer. Additionally, an employee will have obligations to their employer pursuant to Sections 182 and 183 of the Corporations Act.
International Treaties Australia is a party to major international intellectual property (IP) treaties, including the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights 1994 (TRIPS Agreement). The TRIPS Agree - ment sets out general principles and contains mini - mum standards on IP and enforcement procedures to which Australia adheres. Article 39 (2) requires mem - ber states to accord protection against unauthorised use of “undisclosed information” in a way that is “con - trary to honest commercial practices”, and defines “undisclosed information” for this purpose as: • secret in the sense that it is not, as a body or in the precise configuration and assembly of its compo - nents, generally known among or readily accessi - ble to persons within the circles that normally deal with the kind of information in question; • having commercial value because it is secret; and • having been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret. International treaties apply only to the extent that they are incorporated into domestic law. 1.2 What Is Protectable as a Trade Secret Information will be a trade secret if it has the neces - sary quality of confidence and is not within the public domain. Such information can include technical infor - mation such as software algorithms, data, formulae, manufacturing processes and commercial information such as client and customer lists, information relating to pricing, sales forecasts and advertising strategies. 1.3 Examples of Trade Secrets Information in Australia that has been found to have the necessary quality of confidence to be a trade
secret has included, for example: • client, customer and supplier lists; • designs such as building plans; • marketing materials; • mathematical spreadsheets; • information relating to pricing;
• sales forecasts; and • business information.
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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.
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AUSTRALIA Law and Practice Contributed by: John Lee, Siabon Seet, Vanessa Farago-Diener and Irini Lantis, Gilbert + Tobin
breach of fiduciary duty and (if the employer was a corporation) breach of the Corporations Act will also apply. 1.13 Other Legal Theories Claims in relation to trade secrets can be commenced in Australia where there is use or threatened use of the trade secret without consent. A number of trade secret cases commenced each year in Australia relate to employee misappropriation of trade secrets whereby the employer commences proceedings to recover its trade secrets and stop any potential use by the former employee. In addition to claims against a former employee, including for breach of employment contract, a third party may be liable in relation to a breach if they are deemed to have knowledge of it. Australian courts have held that the following will satisfy the knowledge limb: • actual knowledge; • wilful blindness; • wilfully and recklessly failing to make such inquiries as an honest and reasonable person would make; and • knowledge of circumstances which would indicate the facts to an honest and reasonable person. Additionally, a third party may be liable for induce - ment for breach of contract. In Australia, this involves a defendant inducing another person to break a con - tract with the plaintiff. In order to make out a case for inducement for breach of contract, the plaintiff must show that the defendant procured or induced the breach of contract and that there is proof of the damage caused by the inducement ( Daebo Shipping Company Ltd v The Ship Go Star (2012), 207 FCR 220). 1.14 Criminal Liability Misappropriation of trade secrets are pursued as civil claims in either the Federal Court or the Supreme Court of the relevant state or territory. An exception is where the misappropriation of the trade secrets is by a director or other officer or employee
of a corporation who has used their position to obtain the information, and the use of the trade secrets has a dishonesty element, such that there has been a likely breach of Section 184 of the Corporations Act, or where the misappropriation of trade secrets involves a foreign government principal under the Criminal Code Act 1995 (the Code). If found guilty of either offence, the court can impose a maximum penalty of up to 15 years imprisonment. 1.15 Extraterritoriality Generally, any misappropriation must be within Aus - tralia in order for a trade secret owner to bring a claim under Australian law. There are, however, discrete instances where a claim can be brought in Australia. This includes, for exam - ple, if a claim: • is against a company that is carrying on business in Australia; or • is against an individual whose employment con - tract has a choice of jurisdiction or against a company whose contractual arrangements include a choice of jurisdiction that includes Australia. 2. Misappropriation of Trade Secrets 2.1 The Definition of Misappropriation In order to make out a claim of trade secret misappro - priation, the owner of the trade secret must show that there has been, or is threatened to be, an authorised use or disclosure of the information which causes det - riment to it ( Smith Kline and French Laboratories (Aust) Ltd v Secretary, Department of Community Services and Health (1989), FCA 556). It is not necessary for the owner of the trade secret to show that the defendant gained access through unlawful means in order to commence proceedings. 2.2 Employee Relationships The implied obligations in an employment contract are an important legal duty that protects employers from misconduct of employees. An employee will be in breach of their fiduciary duties if they engage in activities which are incompatible with the fulfilment of
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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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AUSTRALIA Law and Practice Contributed by: John Lee, Siabon Seet, Vanessa Farago-Diener and Irini Lantis, Gilbert + Tobin
4. Safeguarding Against Allegations of Trade Secret Misappropriation 4.1 Pre-Existing Skills and Expertise It is accepted by Australian courts that employees will have a bank of general knowledge and skills relevant to their field of expertise. Employment contracts which attempt to prohibit for - mer employees from using their general knowledge and skills for subsequent employers have been held to be unenforceable. Similarly, long non-compete pro - visions in employment contracts are also commonly held to be unenforceable in Australia. While Australia does not recognise the US doctrine of “inevitable disclosure”, Australian courts can consider as part of their equitable jurisdiction whether to impose a non-compete term for a former employee in circum - stances where there is no express non-compete in the employment contract and the new employer’s work substantially overlaps with the former employer’s work ( Liberty Financial Pty Ltd v Jugovic (2021), FCA 607). 4.2 New Employees In order to protect itself from claims of trade secret misappropriation, companies will often include con - tractual obligations in employment contracts requiring that no third-party trade secrets or information not in the public domain is used by the employee. Larger companies will also often have robust IT poli - cies and procedures in place to limit any potential misuse by employees of both the company’s and any third parties’ IP. This will often include restricting use of data transfer devices such as USBs and monitoring of employees’ document activity.
can positively make out its case prior to commencing proceedings. Prior to commencing proceedings, a trade secret owner may send a cease-and-desist letter to the potential defendant outlining its case and request - ing the return of its trade secrets together with an undertaking that the potential defendant will not use the trade secrets. Whether a cease-and-desist letter is sent will turn on the facts of the case and extent of any potential damage. 5.2 Limitations Period There are no specific statutory limits in relation to trade secret rights in Australia. In circumstances where there has been an unauthor - ised use or disclosure of information which is the sub - ject of a confidentiality arrangement, then a limitation period will apply (six years for Queensland, New South Wales, Victoria, Tasmania, South Australia, Western Australia and the Australian Capital Territory, and three years for the Northern Territory). 5.3 Initiating a Lawsuit Once a trade secret owner becomes aware that its trade secrets have been taken or misappropriated, it can commence proceedings in either the Federal Court or a state/territory Supreme Court. Trade secret proceedings, like other civil proceedings, are commenced by way of pleadings which require the plaintiff to set out its case and the remedies it seeks. 5.4 Jurisdiction of the Courts Australia has a tiered court system which includes a federal court system, state/territory courts and spe - cialist courts. Proceedings for misappropriation and breach of trade secrets and confidential information can be brought in either the Federal Court of Australia, which is a national court, or the Supreme Court of the relevant state/territory. The choice of jurisdiction will depend on whether the party initiating the proceedings has an equitable, contractual or statutory claim and whether there are any additional IP rights, such as copyright infringement, being asserted. The Supreme Court is
5. Trade Secret Litigation 5.1 Prerequisites for Filing a Lawsuit
When a party believes that its trade secrets and/or confidential information may have been misappropri - ated or taken, it must first determine with specificity the information in issue. The party must then iden - tify whether there is an equitable, contractual and/ or statutory breach of confidence and ensure that it
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AUSTRALIA Law and Practice Contributed by: John Lee, Siabon Seet, Vanessa Farago-Diener and Irini Lantis, Gilbert + Tobin
generally the appropriate Court for matters involving equitable claims whereas the Federal Court more typi - cally hears contractual claims. If additional IP rights are being asserted, then the proceedings will need to
• There is a real possibility that the plaintiff may destroy such material or cause it to be unavailable in a proceeding or prospective proceeding. Search orders are carried out by an independent legal adviser. In cases where the search orders include the seizure of electronic devices, an independent forensic expert will also be included in the search party. 5.7 Obtaining Information and Evidence Pre-Trial Discovery In both the Federal Court and state/territory Supreme Courts, pre-trial discovery is permitted by order of the Court and is known as “preliminary discovery”. Pre - liminary discovery is an order requiring a prospective defendant to give discovery of documents that are directly relevant to whether the prospective plaintiff has a claim against the prospective defendant. To obtain preliminary discovery, the prospective plain - tiff must show that after making reasonable enquir - ies, they do not have sufficient information to decide whether to commence a proceeding and they reason - ably believe that they may have a right to relief ( Aristo- crat Technologies Australia Pty Ltd v Ainsworth Game Technology Ltd (2018), FCA 1511). Preliminary discovery can be a very useful mecha - nism, particularly for employers who believe that a for - mer employee has misappropriated its trade secrets but may not have sufficient evidence (such as foren - sic evidence) to bring proceedings (see, for example, Aristocrat Technologies Australia Pty Ltd v Light & Wonder Inc (2024), FCA 439). The party giving discovery must serve on other parties a list of documents that describes the: • categories of documents in its control; • documents previously but no longer in its control; and • privileged documents. The list of documents must be verified by affidavit. The party giving discovery then produces the non-privi - leged documents. If this party does not produce the documents, the other parties can apply for an order for production of these documents.
be commenced in the Federal Court. 5.5 Initial Pleading Standards
In Australia, in order to commence a claim in relation to trade secret theft or misappropriation, the trade secret owner must be able to satisfy the four elements of the claim prior to commencing proceedings. The four elements are: • the trade secret owner must be able to identify with specificity, and not merely in global terms, that which is said to be the information in question; • must be able to show that the information has the necessary quality of confidence (and is not, for example, common or public knowledge); • the information was received by the defendant in such circumstances as to import an obligation of confidence; and • there is actual or threatened misuse of that infor - mation, without the consent of the plaintiff. The pleadings filed by the plaintiff are required to address each for the four elements. Given the nature of trade secrets, it is common that the information in issue is separately referred to in a confidential plead - ing. 5.6 Seizure Mechanisms Australian courts have broad powers to make orders, including search orders (Anton Piller orders), at vari - ous stages of a proceeding. Search orders can be made by the court ex parte (see, for example, Aris- tocrat Technologies Australia Pty Ltd v Tran , Federal Court No NSD10 of 2024). A court can grant a search order if the following condi - tions are met. • There is a strong prima facie case. • The damage (potential or actual) to the plaintiff will be serious of the order is not made. • There is sufficient evidence that the plaintiff has in their possession important evidentiary material.
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AUSTRALIA Law and Practice Contributed by: John Lee, Siabon Seet, Vanessa Farago-Diener and Irini Lantis, Gilbert + Tobin
Other Mechanisms Other mechanisms to obtain evidence include the fol - lowing. • Identity discovery – this is an order requiring a party to give evidence or produce documents relat - ing to the identity of a prospective defendant. • Search orders (Anton Piller orders) – a search order requires the defendant to permit persons to enter its premises for the purpose of securing the preser - vation of evidence that may be relevant to an issue in the proceeding (or prospective proceeding). • Inspection orders – these are orders to inspect, sample, observe or conduct an experiment on any document or item. • Interrogatories – these are orders requiring another party to provide written answers to questions, veri - fied on affidavit. • Notices to admit facts or documents – a party can require another party to admit the truth of any fact or the authenticity of any document. • Notice to produce – a notice to produce is a request for the inspection of any document or item. • Subpoenas – subpoenas require attendance in court to give evidence and/or produce any docu - ment or item. 5.8 Maintaining Secrecy While Litigating In order to maintain the secrecy of the trade secret or confidential information at issue in a proceeding, Australian courts will often make orders requiring that certain materials (including evidence, documents pro - duced, and parts of judgments) be kept confidential and only available to certain persons or classes of per - sons (eg, the parties’ legal advisers, experts retained in the proceedings, and the principal instructing in- house counsel). 5.9 Defending Against Allegations of Misappropriation Defences or potential arguments available to a defend - ant in trade secret proceedings include: • that the information is in the public domain; • that the information does not have the necessary quality of confidence; • that the plaintiff has failed to identify with preci - sion what information the defendant is said to have
used – identification in global terms by the plaintiff is insufficient; • that the alleged duty of confidence is not owed by the defendant to any particular person – an equita - ble duty of confidence is not owed at large – rather, it is owed to certain persons having imparted infor - mation in circumstances importing an obligation of confidence; • that there has been independent creation; and • that the plaintiff cannot establish a causal con - nection between the defendant’s actions and the alleged breach. 5.10 Dispositive Motions Prior to trial, a party can seek “summary judgment” (in relation to the whole or any part of the proceeding) where the other party has no “reasonable prospect” of successfully defending or prosecuting the claim. The court can also give judgment (generally or in relation to any claim for relief) where it is satisfied that the pro - ceeding or claim is frivolous, vexatious, an abuse of process or no reasonable cause of action is disclosed. When requesting summary judgment, the moving party will need to provide supporting evidence in the form of an affidavit/s establishing why summary judg - ment is warranted. A party making an application for summary judgment should only do so where there is a strong case that summary judgment is warranted. 5.11 Cost of Litigation It is difficult to accurately estimate the cost of trade secret proceedings. The cost will depend on factors such as: • the nature and number of asserted grounds in issue; • the number of documents which are said to com - prise the misappropriated trade secret or confiden - tial information; • the nature of the evidence required to establish that the trade secret or confidential information has the necessary quality of confidence; and • the extent to which expert technical evidence is required to support or defend the claim.
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