UK Law and Practice Contributed by: Nicola Dagg, Steven Baldwin, Rory Clarke and Ashley Grant, Kirkland & Ellis International LLP
4. Safeguarding Against Allegations of Trade Secret Misappropriation 4.1 Pre-Existing Skills and Expertise The UK recognises the distinction between the general knowledge and skills of an employee and protectable trade secrets. In general, types of employee “knowledge” can be classified into the following categories: • trade secrets, which are protectable (regard - less of contractual provisions) both during and after employment; • confidential information, which is protectable during the term of employment; • information that amounts to the skill and knowledge of the employee, which belongs to the employee; and • public information, which cannot be pro - tected. The Directive expressly provides that it will not restrict employees’ use of “information that does not constitute a trade secret as defined” , or of “experience and skills honestly acquired in the normal course of their employment” . UK law recognises a distinction between mak - ing use of information and skills acquired from years of working in a job or industry and particu - lar information that is specifically committed to memory (see Printers and Finishers Ltd v Hol - loway (1965) 1 WLR 1 and Faccenda Chicken Ltd v Fowler (1987) Ch 117). There is no specific doctrine of “inevitable dis- closure” in the UK. However, a similar concept is incorporated into breach of fiduciary duties. For example, in Prince Jefri Bolkiah v KPMG (1998) UKHL 52, the court held that once it was shown
that the firm (KPMG) was in possession of con - fidential information due to employee knowl - edge, the evidential burden shifted to the firm to show that there was no risk that the information would come into the possession of those act - ing against the original holder of the confidential information. 4.2 New Employees When hiring an employee from a competitor, best practices include: • requiring the new employee to sign an affi - davit or employment agreement confirming they did not take their previous company’s information and will not use it in their present employment; and • maintaining records of the independent crea - tion of new concepts, ideas and/or customer lists. 5. Trade Secret Litigation 5.1 Prerequisites to Filing a Lawsuit There are no trade secrets-specific pre-action procedural steps that must be satisfied before a trade secrets action can be commenced in the UK. Under Civil Procedure Rule (CPR) 7, proceed - ings commence when the court issues (ie, seals and dates) a claim form at the request of the claimant. A claim form is a brief document set - ting out key information about the claim and the relief sought. Once issued by the court, the claim form must be served within four months (or six months where it is to be served outside the jurisdiction).
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