An International Guide to
Patent Case Management for Judges

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8.6.9 Protecting trade secrets in litigation Limited access to trade secrets

Access to trade secrets may be restricted by court orders. Upon a party’s request, the court can order that only the parties to the lawsuit may access or copy the portions containing trade secrets in the court record or request delivery of the authentic copy, certified copy or abstract of the portions containing trade secrets in the court decision or trial record.132 However, this restriction cannot regulate a party’s divulgence to others of trade secrets learned in the course of litigation, which may instead be prevented by a confidentiality protective order. Confidentiality protective order

A party may refuse to produce a document on the grounds that it contains confidential information (e.g., a trade secret). In that case, the court may order the party to present the document to the court for an in camera review. Neither the parties nor their counsels can participate in such review.

Where it is necessary for a party to disclose a trade secret in litigation alleging violation of the Unfair Competition Prevention and Trade Secret Protection Act, then, under Article 14-4 of the Act, the party may petition the court to issue a confidentiality protective order to prevent any unauthorized disclosure of the trade secret thereafter. Under the Act, a “trade secret” is defined as information of a technical or business nature that can be used in business activities and is generally unknown to the public and possesses independent economic value, the secrecy of which is maintained through substantial efforts.

The Act protects trade secrets disclosed in litigation using confidentiality protective orders, a violation of which may be subject to criminal punishment. Upon a party’s request, the court may issue an order prohibiting the opposing party, its counsel or any other person who becomes aware of the trade secret through the litigation from using the trade secret for purposes other than conducting the litigation and from disclosing the trade secret to anyone other than the persons to whom the confidentiality protective order was issued.

A party petitioning for a confidentiality protective order must establish that a brief or evidence already submitted or to be submitted contains trade secrets and that any use or disclosure of the trade secret for purposes other than conducting the litigation would likely impede the business operation of the relevant party. The petition must specify the facts to support that these criteria are met, the person(s) who should be subject to the order and the facts sufficient to identify the trade secrets to be protected by the order.

Once the order is issued, the persons subject to the order are prohibited from using or disclosing the trade secret for purposes other than the particular lawsuit. Such prohibition includes the cross-use of the relevant materials or information in other lawsuits domestic or foreign. Any party violating the confidentiality protective order in the Republic of Korea or overseas without justification may be imprisoned for up to five years or fined up to KRW 50,000,000. Such violations may be penalized only after a complaint is filed by the party that requested the confidentiality protective order. Protecting trade secrets by orders to submit documents and materials

When the court orders the submission of a document to decide whether it is subject to the obligation to produce documents, the court must take measures to protect the document from disclosure to others.133 The document should be reviewed in camera so that it remains sealed from the other party or third parties. Likewise, when a party refuses to submit materials upon a court order, the court may order the submission of the materials to decide whether the party has a good reason to refuse submission, but only with proper measures to prevent others from accessing the materials.134