UK Law and Practice Contributed by: Nicola Dagg, Steven Baldwin, Rory Clarke and Ashley Grant, Kirkland & Ellis International LLP
difference is that there is no public disclosure at all, unlike for patents or trade marks of designs. Trade secrets can also be enforced through
2023 criminalises unauthorised obtaining, cop - ying, recording, retaining, disclosure or provi - sion of trade secrets where it is linked to or for the benefit of a foreign power or could pose a national security risk (Section 31). Violations of the NSA 2023 can result in significant penalties, including imprisonment for up to 14 years and/ or substantial fines (Section 2(8)). There are also criminal laws that can cover mis - appropriation – eg, “fraud by abuse of position” under Section 4 of the Fraud Act 2006 or offenc - es under the Computer Misuse Act 1990. Civil trade secrets claims under common law/ equity and the Directive/Regulation can be pur - sued in parallel. 1.15 Extraterritoriality It is possible to bring a claim based on misap - propriation that happens in another country. The key question is whether the UK is an appropriate forum in which to hear the dispute, considering the totality thereof between the parties (forum conveniens). The courts look for factors con - necting the dispute to the jurisdiction – eg, dam - age suffered. Celgard, LLC v Shenzhen Senior Technology Material Co Ltd [2020] EWHC 2072 (Ch) con - firmed the ability to bring a trade secrets claim in the UK based on an extraterritorial misappro - priation. This point was upheld on appeal ([2020] EWCA Civ 1293). The facts in the Celgard case were as follows: Celgard is based in the USA; the relevant former employee signed an NDA governed by the law of South Carolina, USA; and any misappropriation of trade secrets was likely to have taken place in the USA. The incor - poration of those trade secrets into products by the defendants would have taken place in China. However, the UK was where Celgard would lose
equity and contractual bases. 1.12 Overlapping IP Rights
It is possible for trade secrets to co-exist with other rights – eg, trade secrets in pre-clinical data that accompanies an unpublished patent application for a new chemical entity. Alternatively, it is possible to have a trade secret in relation to an algorithm that co-exists with copyright rights. However, a trade secret requires maintaining information as confidential that is antithetical to most (but not all) other IP rights that require dis - closure as a condition of the right. 1.13 Other Legal Theories Trade secrets misappropriation can also poten - tially be litigated through the tort of inducing or procuring a breach of contract, the tort of unlaw - ful interference, breaches of fiduciary duty (eg, where the misappropriation is by an employee) or breach of contract (where there is an NDA in place). Tortious claims may be useful should a party wish to bring an action against an ex-employ - ee’s new employer who is a competitor. The tort requires actual knowledge and intention to cause economic loss. 1.14 Criminal Liability As noted in the foregoing, whilst trade secret mis - appropriation has traditionally been addressed through civil remedies, the NSA 2023 introduced criminal liability for cases involving espionage or national security threats (Section 2). The NSA
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