Members of the working group: Marion Consoli, Luca Dal Molin, Philipp Groz (chair), Adrienne Hennemann, Michael Liebetanz, Monika Naef, Vera Vallone

The english translation of the summary is included on Swisslex and legalis only.

Under Swiss law there is no unified statutory definition of «trade secrets». To avoid repetition, we refer to the AIPPI Reports of the Swiss Group: «Trade secrets: overlap with restraint of trade, aspects of enforcement (Q 247)» and the «Swiss Group: Protection of trade secrets through IPR and unfair competition law (Q 215)».

There are two ways of initiating civil proceedings in Switzerland:

– In certain cases a lawsuit can be directly brought before the court – for example under the competence of the Swiss Federal Patent Court or the Commercial Court, or in litigation related to intellectual property rights (Art. 5(1)(a) of the Swiss Code of Civil Procedure («CCP»));

– in other cases, conciliation proceedings must first be initiated.

– via a request for preliminary measures according to Art. 261 CCP;

– a request for precautionary taking of evidence according to Art. 158 CCP; or

– by submitting a claim according to Arts. 220 et seq. CCP.

In all three cases, the court can be petitioned for protective measures according to Art. 156 CCP if the taking of evidence endangers the interests of a party or third parties worthy of protection, particularly their business secrets. Such protection can thus be requested prior to the filing of a complaint or simultaneously with it. It is also possible to request protective measures during a later stage of the proceedings. In any event, protective measures under Art. 156 CCP do not extend beyond concluded proceedings.

If conciliation proceedings have to be conducted ahead of the court proceedings, problems with the protection of trade secrets seldom arise. This is because the request for conciliation can be made without giving substantiation and presenting evidence.

Irrespective of the possibility to request protective measures, according to Art. 156 CCP the parties may also sign an (out-of-court) non-disclosure agreement before or after the initiation of the proceedings in order to ensure the protection of their trade secrets.

Does your Group’s current law provide for the protection of trade secrets for or during any of the following stages of civil proceedings? Please tick all that apply. Please explain.

– complaint/pleading/writ of summons initiating a proceeding

– any other pleadings or submissions filed in the context of a proceeding

– production of documents during discovery phase or court-ordered production of evidence

– evidence seizure

– prepared-for-litigation technical description/declaration or any other exhibits

– oral hearing

– hearing transcripts

– witness statements made out of court and on the record for use in litigation (e.g., deposition)

– court decision

– potential for future misuse of trade secret information gained from claimant or defendant during the proceeding

– other, namely __________________

Under your Group’s current law, is there a requirement:

a) for specificity in the pleadings (e.g., the trade secret allegedly misappropriated is required in written documents provided to the court); and/or

b) that knowledge of the trade secret details be known by more than defendant’s outside counsel (e.g., General Counsel, Managing Director, or other types of representatives), so that a defendant can properly defend against a charge of misappropriation of a trade secret? If YES, please explain.

Under your Group’s current law, do any remedies exist for the holder of the trade secret to «re-establish» or «re-gain» the status of a trade secret exposed during a Disclosure action, or more generally during civil proceedings? That is, can a trade secret exposed during a civil proceeding effectively be made or held «secret» so as to still be considered a trade secret? If YES, please explain.

When a trade secret becomes public knowledge, it no longer constitutes a secret and loses its legal protection as a trade secret. However, disclosure of a secret in a lawsuit (even if no measures according to Art. 156 CCP were requested or granted) does not by itself cause the secret to fall into the public domain.

Under Swiss law, there are no remedies for the holder of a (publicly disclosed) trade secret to «re-establish» or «re-gain» its secrecy and its legal status as a trade secret. However, in such a case the trade secret owner may assert claims for damages and, depending on the circumstances, also criminal charges against the disclosing party.

Could your Group’s current law or practice relating to the protection of tradesecret(s) during civil proceedings be improved? Please explain

Swiss courts may assess the appropriate measures to be taken according to 156 CCP on a case-by-case basis (see Preliminary Remarks).

Against this background, the Swiss Group has discussed the following improvements to the current legal situation:

– As trade secrets are protected under different laws depending on the violation committed (i.e. intellectual property, labour, unfair competition, or criminal law), the competent authority that orders the protective measure may vary based on the subject matter (i.e. the Federal Patent Court, a civil or criminal court, in some cantons the local Commercial Court, etc.). The different jurisdictions and the variety of information that falls under the scope of trade secret protection, as well as the case-by-case practice may lead to a lack of harmonisation within Switzerland. Therefore, the Swiss Group is of the opinion that a best practice guide including the use of trade secrets measures based on the relevant cantonal and federal case law would be helpful.

– Further, the Swiss Group discussed the implementation of a non-exhaustive list of measures in the CCP, which reflects a weighing of the gravity of interference with procedural rights of the defendant (e.g., limiting access to evidence is less interfering than waiving the right of evidence). Moreover, the list should be accompanied by a general guidance within Art. 156 CPP prior or after the list of measures that will implement the obligation of the court to take the necessary and appropriate measures to balance parties’ interests as a legal standard.

– The Swiss Group has further discussed the implementation of a legal basis for extending the application of Art. 156 CCP to further stages of proceedings. As an example, in Swiss law there is no clarity on whether Art. 156 CCP may be applicable to conciliation proceedings (to the extent trade secrets are disclosed at all already at that stage, see Preliminary Remarks). Against this background, the Swiss Group discussed whether such measures would be necessary at this stage. In conciliation proceedings, confidentiality is provided pursuant to Art. 205 CPP, which states that (i) hearings are not open to the public; (ii) declarations from both parties will not be reflected in the minutes of the proceedings; and (iii) information acquired from both the hearing and the minutes may not be disclosed during the following main court proceeding and thus, Art. 205 CPP is narrower than Art. 156 CCP.

– According to Art. 77 Swiss Patent Act any person requesting preliminary measures may request that the court orders measures to secure the evidence. In the event the opposing party claims that trade secrets are involved, the court applies the attorney’s eyes-only mechanism. Only then does the court prevent the applicant from accessing trade secrets (especially if a description is requested under Art. 77(1)(b) Swiss Patent Act). The Swiss Group notes that although an attorney’s eyes-only mechanism is a practical instrument to prevent disclosure of trade secrets, it is not a common practice outside the field of patent law. Therefore, the Swiss Group has discussed the reasons why this mechanism could not be used more often by way of analogy in disputes directly related to trade secrets. The point was raised that although the attorney’s eyes-only mechanism seems reasonable, it is not always a valuable option because trade secrets often include complex technical information, and the attorney may lack the relevant technical expertise. In that regard, it should be noted that a neutral technical specialist is not a valid option either, as the understanding of the trade secret information often requires in-depth knowledge of the industry and business-related information of the trade secret holder that lies within its employees (who, however, do not qualify as a neutral specialist).

– The Swiss Group has also discussed whether a civil court may order confidentiality measures which go beyond the proceedings, something that is not possible under current law (see Preliminary Remarks). For the time period after the proceedings, it is up to the party requesting protective measures to enforce such measures by means of an action based on substantive law provisions (Decision of the Federal Supreme Court of 8 December 2021, 4A_58/2021, cons. 3.2.4). Against this background, the Swiss Group has considered the possibility to implement in Art. 156 CCP the option for the court to order an obligation of confidentiality that extends beyond the end of proceedings. Such a statutory option would need to be limited in terms of possible measures (i.e. an exhaustive list of the measures that may be ordered after the end of a proceeding) and the length of time those measures are enforceable.

In order to limit disclosure of a trade secret, should there be more specific requirements regarding access by a party to a trade secret during a civilproceeding? Please explain.

To limit disclosure, the civil court may choose from a range of non-exhaustive protective measures provided in Art. 156 CCP. Based on the interests of both parties and the overall circumstances the court may choose a reasonable measure. As the measure taken highly depends on a case-by-case basis, the Swiss Group is of the opinion that no further default requirements should be implemented without regard to the case-specific circumstances.

Should remedies to re-establish or regain a trade secret be available to the trade secret holder:

a. if the disclosure of the trade secret during the proceeding occurred intentionally due to a legal requirement (e.g., a legal requirement to specify the basis of a claim, or in response to a court order/interrogatories,etc.);

b. if the disclosure of the trade secret occurred intentionally before exhaustion of all available legal protections, (e.g., protection order, redaction of transcripts, etc.);

c. if the disclosure of the trade secret occurred unintentionally before exhaustion of all available legal protections;

d. other, namely ________________

Under Swiss law, once a trade secret has been publicly disclosed there is no possibility to re-establish its secrecy. However, when trade secrets are disclosed during civil proceedings intentionally due to a legal measure, it is not considered as a disclosure. Thus, the question refers to the substantive law, which defines «disclosure» as opposed to the procedural possibilities of re-establishing the secrecy. The Swiss Group has discussed the possibility to state in Art. 156 CCP that disclosure under a protective measure within proceedings is not equivalent to a disclosure of trade secrets, and whether it was necessary to clarify this point.

The court may order the opposing party not to disclose trade secrets to third parties or to use the acquired knowledge during the proceedings under the threat of a penalty fine pursuant to Art. 292 Swiss Criminal Code (see also Art. 343(1)(a) CCP). However, this measure must be suitable, necessary and appropriate. According to the Federal Supreme Court, in most cases an obligation to maintain secrecy under threat of a monetary penalty will not be considered as the mildest measure, particularly when a redaction of sensitive data may also be sufficient (Federal Supreme Court Decision dated 8 December 2021, 4A_58/2021, cons. 3.2.3).

Are there any other policy considerations and/or proposals for improvement toyour Group’s current law falling within the scope of this Study Question?

n/a

Does your Group believe that there should be harmonisation in relation to the protection of trade secrets during civil proceedings? Please answer YES or NO

YES (see Question 4). However, the Group believes that such harmonisation is likely to be challenging and potentially needs to be limited to certain areas, given that the underlying mechanisms, stages and procedural rules applicable in civil proceedings differ significantly from one jurisdiction to another.

Does your Group believe that there should be protection of trade secrets for or during any of the following stages of civil proceedings? Please tick all that apply. Please explain.

– complain/pleading/writ of summons initiating a proceeding

– any other pleadings or submissions field in the context of a proceeding

– production of documents during discovery phase or court-ordered production of evidence

– evidence seizure

– prepared-for-litigation technical description/declaration or any other exhibits

– oral hearing

– hearing transcripts

– witness statements made out of court and on the record for use in litigation (e.g., deposition)

– court decision

– potential for future misuse of trade secret information gained from claimant or defendant during the proceeding

– other, namely ________________

During a proceeding, what limits and/or restrictions should there be on Disclosure actions and/or procedures (such as a saisie contrefaçon or other seizure) to limit the unnecessary production of trade secrets, thereby reducing the risk of unnecessary disclosure to those involved in the proceeding and leakage into the public domain?

Pre-trial discovery is not a concept known under Swiss law. However, the CCP provides for a request-based claim to obtain evidence, subject to exceptions (see Question 1). The disclosure request will be assessed by the court on a case-by-case basis and on the grounds of the basic principle of balancing the interests of the trade secret holder as well as guaranteeing due process at the same time. This procedure will, for example, ensure the limitation and/or restriction of extensive requests of evidence. Moreover, a court-ordered disclosure can be combined with a confidentiality order.

Should a trade secret be able to «re-gain» its trade secret status after a disclosure action during a civil proceeding? What conditions should there be to allow the recovery, e.g., trade secret was appropriately marked as «confidential,» and/or «trade secret»?

Once a trade secret has been disclosed, there is no possibility to re-establish its secrecy (see Question 6). Further, Swiss law is not familiar with the concept of «disclosure actions» (see Question 1). Should the court order the production of evidence, the trade secret holder may request protective measures and oppose the decision if necessary (see Question 6).

However, the Swiss Group is of the opinion that a re-defined and harmonised term of «disclosure» would be helpful and meet the interests of trade secret holders also with regards to the publication of the final judgment which should not include secret information (see Question 4). In general, there is no legal obligation of either party to keep information gained during court proceedings secret. Thus, a legal basis regarding the definition of «disclosure» may hinder an opposing party from sharing the outcome of a proceeding to the public (e.g., via online platforms or on their website).

Under Swiss Law, marking a document as «confidential» or «trade secret» is not sufficient to protect the information contained within it. It is not within the court’s tasks to conduct a seizure of evidence by virtue of the document being labelled as a trade secret. It is the claimant’s obligation to show that any information qualifies as a trade secret. In any case, a document marked as «confidential» and/or «trade secret» will not suffice to qualify a document as a trade secret. The document may be outdated and/or the information may have already been disclosed after the marking of the document, in which case the marking has no relevance.

Which, if any, of the following should be required or encouraged in any civil litigation in order to maintain a balance between protecting the allegedly misappropriated trade secret and allowing a defendant to defend against a misappropriation charge? Please tick all that apply.

– limit access to the trade secret details to defendant’s outside counsels only

– limit access to the trade secret details to a limited number and type of defendant’s inhouse representatives (e.g., General Counsel, Managing Director, Chief Technology Officer, etc.) and outside counsel

– limit access to the trade secret details to hired third party expert(s) to view and provide directed findings regarding the trade secret details (e.g., court-ordered expert or defendant’s hired expert and plaintiff’s hired expert meet separate from the parties to compare the plaintiff’s trade secret details with the defendant’s information); and/or

– allow the defendant to challenge the confidentiality or trade secret status of a document/material during the proceeding