Context: French Decree No. 2018-1126 of 11 December 2018 on the protection of trade secrets, enacted in application of Act No. 2018-670 of 30 July 2018, establishes rules to preserve trade secrets in the context of civil and commercial proceedings and substantially modifies the rules for protecting the confidentiality of documents seized during a saisie-contrefaçon.
Looking Ahead: Future case law on the articulation between the different regimes will have to be carefully monitored.
The 11 December 2018 Decree introduces Article R. 153-1 into the French Commercial Code, authorizes the judge ordering measures of inquiry on the basis of Article 145 of the French Code of Civil Procedure, to order the provisional sequestration of the requested documents in order to protect the trade secrets they may contain. It also modifies Articles R. 521-2, R. 615-2, R. 623-51, R. 716-2, and R. 722-2 of the French Intellectual Property Code to give the same powers to the judge authorizing a saisie-contrefaçon.
When the judge uses these new powers, the Decree regulates the fate of the seized documents by distinguishing according to whether or not the judge receives a request for modification or withdrawal of his order.
If the judge does not receive a request to modify or withdraw his order within one month of the service of his order, the provisional sequestration measure shall be lifted and the documents shall be transmitted to the applicant.
If the judge receives a request for modification or withdrawal within the aforementioned period, he is authorized to decide on the total or partial lifting of the sequestration measure and must do so by following a procedure established by the new Article R. 153-3 of the French Commercial Code.
Under this new procedure, it is up to the party claiming trade secret protection, therefore a priori the party whose documents were seized, to provide the judge with:
The complete confidential version of this document; A non-confidential version or a summary; A memorandum specifying, for each part of the document, the reasons why confidentiality must be ensured. Coexistence with Other Previous Provisions These new rules should coexist with previous practice and other provisions of the French Intellectual Property Code.
In particular, in the absence of a specific provision in the order authorizing the saisie-contrefaçon ordering the provisional sequestration pursuant to the new text, the party whose...