Luke Hung
The Intellectual Property Court rendered the 108-Xing-Zhi-Shang-Yi-10 Decision of May 2, 2019 (hereinafter, the “Decision”), holding that since the nature of industrial and commercial secrets and trade secrets is not exactly the same, the definition of trade secrets under the Trade Secret Law should not constrain the application of the industrial and commercial secrets under Article 317 of the Criminal Code.
According to the facts underlying this Decision, the Defendant served as an engineer and member of the construction team of Company A during August 19, 2015 through December 5, 2016. To control the progress of construction, Company A prepared a construction control schedule. The Defendant was aware, due to the performance of his job duty, that the construction control schedule of Company A is Company A’s industrial and commercial secret, and was contractually obligated to maintain its confidentiality. However, the Defendant disclosed the industrial and communication secret he had learned due to the performance of his job duty by using his LINE communications software in his office to take a picture of the construction control schedule created on April 8, 2016 and to send it to Individual Y, the legal representative of B Telecommunications Construction Firm, a subcontractor of Company A, at around 14:55 on November 17, 2016 without Company A’s consent.
According to the Decision, the so-called “industrial and commercial secrets” are not specifically defined under Article 317 of the Criminal Code. In practice, it is believed that “industrial and commercial secrets” refer to industrial or commercial confidential facts, matters, items or data which cannot be disclosed to others with an emphasis on the protection of their economic value. According to academic theories, trade secrets refer to industrial or commercial inventions or business plans which are not disclosed in public by nature, including industrial manufacturing secrets, the manufacturing methods of patented products, commercial business plans, the asset and liability status of an enterprise and a list of customers. As long as the data cannot be disclosed in public due to their associated industrial and commercial operation benefits, they are industrial and commercial secrets which should be protected by the provisions concerning this offense. The offense of breaching industrial and commercial secrets under the Criminal Code was stipulated more than 60 years before the Trade Secret Law was enacted. According to the legislative backgrounds for drafting the Criminal Code at that time, it is difficult to conclude that it was required that industrial and commercial secrets should meet the three criteria for trade secrets under the current Trade Secret Law when the Criminal Code was formulated. In addition, the legislative objectives of the Trade Secret Law are not to constrain the application of the offense of unjustified leakage of industrial and commercial secrets, and the penalties under the Trade Secret Law are also different from those for breach of industrial and commercial secrets. Therefore, it is certainly inappropriate to use the definition of trade secrets under the Trade Secret Law to constrain the application of the provisions concerning industrial and commercial secrets under Article 317 of the Criminal Code. Therefore, the nature of industrial and commercial secrets and trade secrets is not exactly the same.
It was further pointed out in this Decision that even though the construction control schedule was posted on the file cabinets of the company, it was not very easy to learn about the contents of the schedule unless the observer move very closely to take a look. Since Company A was not a place readily accessible by the public, and very few outside people learned about the construction control schedule based on the way such construction control schedule was stored, it can be concluded that other people could not learn about the projects contracted to Company A by ordinary means. Therefore, the control schedule is not public information. Company A’s behavior objectively prevented the construction control schedule from being disclosed, and the Defendant also subjectively perceived that such information is Company A’s secret. Therefore, it is sufficient to conclude that the construction control schedule in this case is an industrial or commercial secret which is not disclosed to the public, belongs to Company A, has economic value and is not intended to be learned by others. In addition, although B was a subcontractor of Company A, still B was merely a contractor for part of the project covered by the construction control schedule and had never learned about the contents of the construction control schedule. Therefore, the Defendant’s disclosure of it to B should constitute the leakage of Company A’s industrial and commercial secret.