GERMANY Law and Practice Contributed by: Thomas Nägele, Simon Apel, Jonathan Drescher and Alexander Stolz, SZA Schilling, Zutt & Anschütz
to a de facto worldwide monopoly (even though the scope of protection may differ from jurisdic - tion to jurisdiction). In contrast, an invention pat - ented in Germany can be used in other countries without legal consequences, unless indepen - dently patented there. In addition, protection by secrecy has an immediate and unlimited effect, whereas the patent application procedure can take several years and the term of protection is limited to 20 years. 1.12 Overlapping IP Rights Generally, parallel protection of the same infor - mation as a trade secret and as any other IP right (with the exception of copyright, which does not require publication) will factually not be possible in most cases. In particular, the protection under the TSA and as a registered intellectual property right are mutually exclusive. This is because pro - tection as a trade secret requires the information in question to be secret, whereas protection as a registered right (eg, as a patent) requires an application – and thus its disclosure. Therefore, parallel protection for technical secrets can only apply in (extremely rare) cir - cumstances, where the information in question is registered as a so-called secret patent pursu - ant to Section 50 of the German Patent Act. 1.13 Other Legal Theories The TSA is not exhaustive. Therefore, in princi - ple, it is possible to bring a claim for breach of fiduciary duty against an employee who steals a trade secret or to bring a claim for tortious inter - ference with contract against a defendant where it has induced an employee to breach a con - tractual confidentiality obligation to the owner/ employer. However, there is an interdependence between contractual liability and liability under the TSA.
On the one hand, the design of the respective contract forms the framework of the legal protec - tion of trade secrets and restricts such protec - tion. For example, Section 3 (2) of the TSA gives general precedence to contractual agreements over the provisions of the TSA and Section 4 (2) Nos 2 and 3 forbids the use or disclosure of trade secrets only as long as it is in violation of a contract. On the other hand, the considerations of the TSA must be taken into account when interpreting contractual agreements and when determining the scope of non-explicitly agreed confidentiality obligations and rights of use. As a result, the scope of secrecy protection under the TSA does not generally differ from the scope of contractual claims. 1.14 Criminal Liability German law imposes criminal penalties for trade secret misappropriation if the offender deliber - ately infringes a trade secret: • to promote competition, whether internal or external; • out of self-interest; • for the benefit of a third party; or • with the intention of causing damage to the owner of a business. The penalty is imprisonment for up to three years or a fine and can go up to imprisonment for up to five years or a fine, if the offender acts on a commercial basis, knows that the trade secret is to be used in foreign countries, or uses the trade secret in foreign countries themselves. A trade secret owner can pursue both civil and criminal claims. In fact, the initiation of criminal proceed - ings (and the investigative powers of the public prosecutor’s office) is often the only way in which the trade secret owner can obtain the necessary evidence for their civil action (see 9.1 Prosecu- tion Process, Penalties and Defences ).
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