“Guanidinoacetic Acid”

• 1. When determining whether allegedly infringing information is substantively the same as the trade secret in question, the following factors may be considered:

  • (i) the extent or level of similarity between the allegedly infringing information and the trade secret;

  • (ii) whether relevant personnel in the field concerned could easily identify the difference between the allegedly infringing information and the trade secret when the alleged infringement took place;

  • (iii) whether the application, method for the application, purpose and end results of the allegedly infringing information are substantially different from those of the trade secret;

  • (iv) the availability of information related to the trade secret in the public domain;

  • (v) other factors that need to be considered.

• 2. Parties to a technical secret licence contract may reach an agreement regarding the scope within which the licensee is allowed to use the technical secret, including the time limits, territory, method of exploitation or use of and the number of personnel who have access to the patent or technical secret concerned. Parties may also reach an agreement regarding the non-disclosure period.

• 3. Where a technology licence contract has not expressly stipulated whether the licensee may allow others to use or disclose a trade secret after the non-disclosure period expires, in order to determine if a licensee may or may not do so, the following elements must be considered: the purpose of the contract, the rights and obligations of both parties, the contract price, how the contract has been performed, business practices and the principle of good faith.

• 4. According to the law, non-disclosure obligations include general passive obligations under tort law, such that no one is allowed to use or allow others to use a trade secret without the permission of the rights holder as stipulated in Art. 9(1) of the Anti-Unfair Competition Law, as well as obligations based on the principle of good faith that exist before a contract is signed, during the contract term and after the contract is terminated.

• 5. Trade secrets to which parties have access during a contract negotiation process must not be disclosed or improperly used, regardless of whether a contract is entered into.

• 6. After a contract is terminated, the parties are still bound by the non-disclosure obligations, and if they fail to fulfil these obligations, they shall be liable for damages.

• 7. Given the nature of a technology licence contract, a licensee is only granted the right to use the trade secrets thereof. The non-disclosure period stipulated in a contract shall not be interpreted as meaning that a transferee or licensee has permission to allow others to use or even to disclose trade secrets thereof after the non-disclosure period expires. As disclosure of a trade secret is equivalent to waiving the rights thereto, no one else other than the rights holder may exercise such a right, unless expressly stated otherwise within a contract.

• 8. As no distinction is made between technology transfer contracts and technology licence contracts under the Contract Law, the provisions for technology transfer contracts shall apply to technology licence contracts.

• 9. Under a technology licence contract, the minimum non-disclosure obligations a licensee must fulfil include:

  • (i) a licensee must not allow any third party to use relevant trade secrets without the consent of the licensor;

  • (ii) a licensee must take measures to keep the trade secrets confidential, and must not disclose the trade secrets intentionally or through omission or negligence;

  • (iii) regarding technology and related information provided directly or through training by a licensor, a licensee must fulfil its obligations as per the scope and time limit stipulated in the contract;

  • (iv) for technologies that require protection beyond the scope and time limit stipulated in a contract, a licensee must follow the principle of good faith and fulfil non-disclosure obligations attached to the contract.