On February 6, 2019, the certificates for successfully completing the additional training in information, telecommunications and media law and the additional training in intellectual property law were presented at a ceremony. On this occasion, we welcomed Prof. Dr. Mary-Rose McGuire from the University of Osnabrück. Prof. McGuire gave an exciting keynote speech on the highly topical subject of “Trade secrets: a new property right?”.
Prof. McGuire studied law at the University of Vienna and wrote his doctoral thesis on “Procedural coordination and interruption of limitation periods in European procedural law”. Her research focuses in particular on license agreement law and procedural coordination in cross-border inventory and infringement disputes. She is currently working on the introduction of the unitary patent into the patent system and the protection of know-how (EU Directive, protection of secrets in the process, reverse engineering), which was also the main topic of the lecture.
Prof. McGuire opened the lecture with the basic problem that arises in all intellectual achievements. These are only protected if a law stipulates this. What initially seems unfair, however, makes perfect sense in practice. Particularly in the area of intellectual performance, there is always a risk that two people will perform the same intellectual feat independently of each other. For this reason, the legislator has determined which intellectual achievements are protected and under what conditions. For a long time, trade secrets were only protected by the Unfair Competition Act, meaning that an infringement was only possible with knowledge of the secret. Directive (EU) 2016/943 of June 8, 2016 on the protection of confidential know-how and confidential business information (trade secrets) against their unlawful acquisition, use and disclosure (the so-called EU Know-How Protection Directive) and the draft law based on it to implement the directive (GeschGehG draft) repeal Sections 17 et seq. of the UWG and remove trade secrets from the UWG. During the lecture, Prof. McGuire therefore posed the central question of whether the trade secret is a new property right. The legislator does not provide a clear answer to this question. However, there is certainly a need. Prof. McGuire cited the problems that arise when employees change jobs as an example. Not only the employee, but also the knowledge acquired, moves to the new employer, which is often a competitor. Furthermore, trade secrets would also be jeopardized by industrial espionage. Trade secrets are virtually an “endangered species”. They are only useful if the owner can determine who uses them. Purely factual protection is not sufficient for this, rather legal protection is required.
However, if one wanted to recognize the trade secret as a property right, one would have to detach oneself from the system of the UWG. Trade secrets would have to be transformed from a pure right of sanction into a right of attribution. It would therefore have to be separated from fair trading law and become an intellectual property right. Prof. McGuire noted that the German doctrine was partly critical of this recognition. There is a fear that the protection could go too far. In particular, there should be no overlap with patent law. However, Prof. McGuire tried to defuse these concerns. In fact, secrecy protection law and patent law hardly overlapped. A customer list served as an example. This would fall within the scope of protection of secrecy law, but would not be patentable under any circumstances. Furthermore, it is not the knowledge as such that is protected, but its economic value.
The EU Know-How Protection Directive argues in favor of classifying trade secrets as a new property right. Here, as in the system of other intellectual property rights, the right is assigned to the owner.
In conclusion, Prof. McGuire therefore stated that the trade secret is indeed a new property right that can serve as a basis for the legal exploitation of trade secrets and also simplifies the enforcement of claims arising from them. However, it should be noted that this is not an exclusive right to the information as such, but to the secret. For this reason, the assumption of a new property right is also in line with the reasoning of the draft GeschGehG.
After the presentation, a number of questions from the audience were answered. The certificates were then awarded by Prof. Holznagel and Prof. Bühling. As part of the award ceremony, Dr. Daniel Graetsch was also presented with the Research Centre for Intellectual Property’s sponsorship award by Prof. Hoeren for his outstanding dissertation on “Economic analysis of the supplementary protection certificate for medicinal products with special consideration of the protection of combinations of active ingredients”. In addition, Ms. Nele Klostermeyer and Ms. Tabea Hamburg received awards for the best seminar papers of the year.
The event was rounded off with a champagne reception, where the award winners, the graduates and all participants had the opportunity to toast the awards and exchange views on the lecture topic, which provided plenty to discuss.
