AUSTRALIA Trends and Developments Contributed by: John Lee, Michael Williams, Siabon Seet and Vanessa Farago-Diener, Gilbert + Tobin
An Overview of the Position in Australia With Respect to Trade Secrets Unlike other jurisdictions, Australia does not have dedicated legislation, nor a discrete body of law, relating specifically to the protection of trade secrets. Indeed, there is no clear defini - tion of “trade secret” in Australia; rather, “trade secret” is a subtype of confidential information having commercial value, and it may be pro - tected as such through an equitable action for breach of confidence. In appropriate circum - stances, an action for breach of non-disclosure or non-use provisions in an employment or other agreement, or breach of applicable statutory or other duties, may also arise. The Productivity Commission conducted an extensive, holistic review of Australia’s intellec - tual property (IP) arrangements commencing in 2015, but did not consider protection of trade secrets as part of that task. Accordingly, while the law relating to trade secrets has undergone significant reform in other parts of the world, the baseline position in Australia remains large - ly unchanged – with Australian jurisprudence evolving as new decisions are handed down, rather than through a deliberate reform agenda enacted via the legislature. Nonetheless, preserving a business’ competi - tive advantage by means of trade secrets may become increasingly important in Australia for several reasons, including because of the ongo - ing uncertainty as to the patentability of comput - er-implemented inventions, and also the recent phasing out of innovation patents. The latter were available in Australia for inventions that, although not inventive when compared with the prior art base, met the lower “innovative step” threshold. In line with this lower threshold, inno - vation patents conferred protection for a shorter (eight-year) term, compared with 20 years for a
standard patent. However, as of August 2021, new applications for innovation patents are no longer able to be filed – with the result that inno - vations in a technical field that are significant and valuable, but that do not rise to the level of an “inventive step” over the prior art base, may be protectable only as a trade secret (with potential copyright elements as well). The authors discuss below various topical issues, including implications for trade secret protection arising from the rapid uptake of artifi - cial intelligence (AI) tools in Australia. Available claims to protect trade secrets in Australia In Australia, a person seeking to prevent the unauthorised use or disclosure of trade secrets may be able to rely on one or more of the follow- ing causes of action: • breach of contract (assuming a contract is or was in place with appropriate confidentiality provisions); • an equitable action for breach of confidence; or/and • contravention of the Corporations Act 2001 (Cth) (Corporations Act) (where the plaintiff is a company incorporated under the Corpora - tions Act and the defendant is a current or former director, officer or employee of that company), the Freedom of Information Act 1982 (Cth) or the Privacy Act 1988 (Cth). Where circumstances permit, it is common for these causes of action to be pleaded together (along with other claims such as copyright or patent infringement, misleading or deceptive conduct, and/or breach of fiduciary duty).
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