Trade secrets litigation in France
Under French law, trade secrets became a legal asset in their own right with the Act of 30 July 2018, which transposes Directive (EU) 2016/943 of 8 June 2016. It protects what a patent does not: manufacturing processes, test data, supplier lists, production parameters; and it is enforced under its own rules. Dhenne Avocats helps companies protect their confidential information and train their teams. The firm also litigates trade-secret disputes before the Paris Judicial Court and protects its clients’ secrets in evidence-gathering proceedings.
Subject matter of protection
Articles L. 151-1 et seq. of the Commercial Code, transposing Directive (EU) 2016/943, define protected information by three cumulative conditions: it is not generally known or readily accessible, it has commercial value because it is secret, and it is subject to reasonable protective measures.
The third condition is the one that loses the most cases. Information may be strategic yet worthless in court if the company cannot demonstrate the measures it took to keep it secret. That documentation work is done before the dispute.
The classification of know-how as a trade secret is not automatic. A tailored non-disclosure agreement (NDA) and appropriate access controls and records help protect this information and establish evidence.
Patent or secret
The choice between filing and secrecy is a business decision before it is a legal one. A patent gives a time-limited monopoly in exchange for full disclosure. Secrecy is unlimited in time but offers no protection against independent discovery or lawful reverse engineering.
In practice the two regimes coexist within the same portfolio: the process stays secret, the product is patented. We work on that interface, in particular in transfers and intellectual property audits.
Trade secrets in the proceedings
Articles L. 153-1 et seq. of the Commercial Code organise the protection of secrecy before the court: restricted access to documents, disclosure of a non-confidential version, confidentiality clubs, adapted hearings and decisions. That framework is now at the heart of patent litigation.
It is decisive after a saisie-contrefaçon, where the seized documents are placed under sequestration and the party seized seeks to have all or part of the material taken excluded. It is equally so before the Unified Patent Court, where the production of comparable licences in FRAND disputes raises the same questions.
Our advisory and litigation work
Advise, structure and transfer
- Identifying sensitive information and putting in place protection measures suited to the business.
- Drafting and reviewing confidentiality agreements, contractual clauses and internal procedures.
- Preparing white papers and practical guides to frame trade-secret protection within the company.
- Training and awareness sessions for executives and teams, based on concrete situations: sharing information, cooperating with partners, and onboarding or departure of an employee.
Défendre et agir en justice
- Unlawful acquisition, use or disclosure of a trade secret.
- Defending an employee or contractor accused of taking know-how.
- Evidentiary measures and provisional measures, for applicants and respondents alike.
- Protecting secrecy in pending proceedings: sequestration, confidentiality clubs and redacted versions.
- Know-how disputes arising from the breakdown of an industrial partnership or a development agreement.
A few matters that illustrate our practice
Embedded software: patents and trade secrets
Representation of an embedded software publisher in litigation concerning a mobility assistance technology. Work on patent infringement, trade secret protection and unfair competition claims before the Paris Judicial Court.
Chemistry: trade secret protection
Involvement in litigation concerning the protection of confidential information and know-how in the chemicals sector. Review of the documents and preparation of pleadings in interim proceedings.
Analyses and publications to go further
- Drafting a confidentiality agreement: a complete guide , analysis by the firm.
- Saisies-contrefaçons and trade secrets: developments in France since the 2018 reform, Matthieu Dhenne, Kluwer Patent Blog.
- Le droit de l’ingénierie inverse (the law of reverse engineering), L’Harmattan, 2021.
Frequently asked questions
Is unpatented information automatically a trade secret?
No. The conditions of Article L. 151-1 of the Commercial Code must be established, in particular the value derived from secrecy and reasonable protective measures.
How is a sensitive document produced at trial?
The judge may order restricted disclosure, a non-confidential version or other appropriate measures. The need for the evidence and the protection of the secret must be examined document by document.
When should a trade secret audit be carried out?
Before a collaboration, a sensitive departure or a dispute. The audit documents the information concerned, who has access and the measures actually applied.
Discuss your matter
Would you like to organise the protection of your know-how, train your teams, or respond to a trade-secret breach? Write to us to define support suited to your situation.