Trade Secrets 2025

AUSTRALIA Law and Practice Contributed by: John Lee, Michael Williams, Siabon Seet and Vanessa Farago-Diener, Gilbert + Tobin

its trade secrets but may not have sufficient evidence (such as forensic evidence) to bring proceedings (see, for example, Aristocrat Tech - nologies 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 affi - davit. The party giving discovery then produces the non-privileged documents. If this party does not produce the documents, the other parties can apply for an order for production of these documents. Other Mechanisms Other mechanisms to obtain evidence include the following. • Identity discovery – this is an order requiring a party to give evidence or produce docu - ments relating to the identity of a prospective defendant. • Search orders (Anton Piller orders) – a search order requires the defendant to permit per - sons to enter its premises for the purpose of securing the preservation 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, verified 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 document 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 (includ - ing evidence, documents produced, and parts of judgments) be kept confidential and only avail - able to certain persons or classes of persons (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 defendant in trade secret proceedings include: • that the information is in the public domain; • that the information does not have the neces - sary quality of confidence; • that the plaintiff has failed to identify with pre - cision 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 equitable duty of confidence is not owed at large – rather, it is owed to certain persons having imparted information in circumstances importing an obligation of confidence;

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