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For the English version, please scroll down. You can also click on 'Read more', or '阅读原文' , at the bottom of the post to view more articles on our website. 问：离职员工侵害原雇主商业秘密的维权难点主要是什么？答：依据《反不正当竞争法》的规定，“商业秘密”是指不为公众所知悉、能为权利人带来经济利益、具有实用性并经权利人采取保密措施的技术信息和经营信息。 商业秘密的界定及侵权行为的调查取证是商业秘密维权过程中的两大难点。实践中，原雇主能否准确界定商业秘密的范围、提供证据证明已采用与之相配保密措施通常决定了其主张的商业秘密的范围和内容能否得到法院的支持。 鉴于商业秘密侵权行为具有较高的隐蔽性，“实质性相同 接触-合法来源”目前仍是法院审理此类案件的一个基本判定规则。然而，原雇主仍应尽可能履行其举证义务而不能简单依赖法院裁判和被告举证，尤其是离职员工涉嫌隐名为竞争对手提供商业秘密的情况下，如何选取适当且有效的方式收集及固定证据。 问：商业秘密纠纷大概有哪些类型？员工离职引发的商业秘密侵权纠纷多吗？ 答：从纠纷主体上而言，商业秘密纠纷主要分为公司与公司之间的纠纷及雇主与员工之间的纠纷。据不完全统计，雇主与员工之间的商业秘密纠纷占所有商业秘密纠纷案件九成以上，而由员工离职引发的商业秘密纠纷更是占到雇主与员工商业秘密纠纷案件九成以上。 由员工离职引发的商业秘密侵权纠纷通常有三种类型：（1）离职员工窃取原雇主商业秘密并在新雇主处使用；（2）离职员工自己或与他人共同设立新公司，使用原雇主商业秘密；（3）离职员工隐名在幕后操纵他人使用原雇主商业秘密。 问：企业应如何构建较为完善的保密制度？ 答：由于商业秘密“一旦丧失就永远丧失”，虽然企业可以通过民事诉讼等途径主张并获得赔偿，但其商业秘密的价值往往已严重受损。就企业而言，事先预防比事后救济更为重要。 完善的保密制度是企业预防商业秘密侵权及日后维权完成举证的重要保障。保密制度的构建是一个系统工程，需要结合不同行业特点、不同公司进行定制化设计。基于防范将来可能的泄密风险及维权便捷化的考量，我们给出如下要点提示：（1）对公司的技术信息及经营信息进行分级管理，划分不同的保密等级；（2）建立健全公司涉及商业秘密的接入控制制度，并采取相应的防范措施，如物理隔绝、加密加锁、设备接入限制和实时监控等；（3）与相关人员签订《保密协议》和《竞业限制协议》，提供相关培训；（4）建立涉密人员离职脱密管理制度；（5）注意留存、保管涉及商业秘密形成、维护和使用的相关资料，如研发资料、成本核算、许可交易记录等；（6）妥善处理涉密设备尤其是电子设备。 问：企业的竞业限制制度与商业秘密保护两者间是什么关系？ 答：竞业限制制度是劳动法赋予企业保护其商业秘密及其他竞争利益的一种有力的手段。企业可以通过与员工签订竞业限制协议，并支付补偿金的方式限制员工在一段时间不得从事与之存在竞争关系的活动，从而有效降低商业泄密风险。 此外，在商业秘密维权阶段，竞业限制也往往与侵害商业秘密纠纷交织在一起。违反竞业限制协议为商业秘密维权提供额外救济途径。譬如，通过主张违反竞业限制协议，离职员工最终无法继续从事与之存在竞争关系的活动，从而避免商业泄密。另外，违反竞业限制协议纠纷亦可为商业秘密侵权诉讼提供相关证据支持。 问：企业发现员工离职后，违反竞业限制协议，到竞争对手处工作，应该怎么办？ 答：若员工违反竞业限制协议，到竞争对手处工作，但企业并无证据证明商业秘密遭到侵害时，我们认为此时虽无侵权证据，但存在较大泄密风险，建议企业通过劳动仲裁解决离职员工违约纠纷，从而实现离职员工终止与竞争对手的劳动关系。 若发现离职员工违反竞业限制协议并导致商业秘密泄露时，就诉讼策略而言，企业有三种选择：（1）首先对离职员工提起劳动仲裁，追究其违约责任，然后提起针对离职员工和侵权公司的商业秘密侵权诉讼，追究两者的侵权责任；（2）同时提起劳动仲裁和侵权诉讼；（3）仅提起离职员工和侵权公司的侵权诉讼。我们建议企业结合实际案情，经过全面分析后，选择适合的维权策略并采取与之契合的调查取证方式。
Q: What are the primary sticking points for employers in taking legal action against ex-employees for trade secret misappropriation? A: According to the Anti-unfair Competition Law of the People’s Republic of China, “trade secret” is defined as technical information and commercial information that is unknown to the public, which could bring economic benefits to the owner, which has practical applicability and which the owner has taken measures to keep secret. Determination of the scope of trade secret and evidence collection of trade secret misappropriation are two major obstacles for the owner to enforce its trade secret. In practice, whether a former employer’s claims are supported by a court are significantly determined by whether it can present a clear scope of its trade secret and provide evidence proving that it has taken appropriate measures to protect its trade secret. Given the secret nature of trade secret misappropriation, a fundamental principle broadly adopted by courts is whether information possessed by a former employee is at least substantively similar as that claimed by a former employer, whether the former employee did, or did likely, get access to such information, and whether the former employee can provide a legitimate source for his or her information. However, this principle does not mean that the former employer can simply rely on a court to make a judgment and/ or the former employee to prove his or her innocence. Instead, it should take appropriate and effective action to collect evidence against the ex-employee, especially when it suspects the ex-employee anonymously shared its trade secrets with its competitors. Q: How are disputes related to trade secrets categorized? Are there many such disputes caused by employee departure? A: Disputes related to trade secrets either take place between two companies or between an employer and its employee. According to incomplete statistics, more than 90% of trade secret disputes are between employers and employees, and a similar percentage of such disputes are triggered by employee departure. Trade secret disputes triggered by employee departure can be classified into three categories: (1) a departing employee stole the employer’s trade secret and shared it with his or her new employer; (2) the departing employee set up a new company alone or with others to use the ex-employer’s trade secret; and (3) the departing employee acted behind the scenes to misappropriate the ex-employer’s trade secret. Q: How do I build a well-guarded system to secure my trade secrets? A: Given the secret nature of a trade secret, the owner usually cannot be sufficiently compensated via civil litigation and other remedy channels once the trade secret is misappropriated. Prevention of trade secret misappropriation is much more important and necessary for an enterprise than pursuing judicial remedies afterwards. Building a well-guarded security system is critical for trade secret protection and protective measures can also be used as favourable evidence in future potential litigation. A comprehensive security system must be built in consideration of the characteristics of different industries and operation models of individual companies. From the perspective of preventing leaked secrets and facilitating future enforcement, the authors offer the following key suggestions: (1) classify the company’s technical and commercial information according to levels of confidentiality; (2) build a full set of trade secret access mechanisms, and take appropriate protection measures, such as physical isolation, data encryption, device access restrictions, and real-time monitoring; (3) sign confidentiality agreements and non-compete agreements with employees who may get access to trade secrets, and provide regular training for them; (4) set rules regarding the management of departing employees who have access to trade secrets; (5) preserve materials about creation, maintenance and use of trade secrets, such as R&D data, cost estimates and licence records; and (6) properly dispose of devices that contain sensitive information, especially electronic devices. Q: How is a company’s non-compete regulation related to trade-secret protection? A: Non-compete regulation is a powerful tool granted by the Labour Law to companies to protect their trade secrets and other business interests. A company can sign a non-compete agreement and make compensation to its former employees in exchange for their commitments not to work for any competitors, so as to reduce the risk of trade secret misappropriation, for a certain period. In addition, non-compete regulation can be used as a weapon in trade secret enforcement. If a trade secret has not been shared by a former employee with his or her current employer, a non-compete agreement can effectively prohibit the former employee from continuing to work with the competitor. Moreover, a dispute on non-compete might provide useful evidence for trade-secret enforcement. Q: What should a company do when it finds that its ex-employee breached the non-compete agreement and is working for a competitor? A: If an ex-employee breaches his or her non-compete agreement and works for the company’s competitor, while the company has no proof that its trade secrets have been misappropriated, the authors believe there is a relatively high risk of trade secret misappropriation, and advise the company to resolve such dispute with the ex-employee through labour arbitration, so as to force the ex-employee to terminate the employment relationship with its competitor. When a company discovers its ex-employee breached the non-compete agreement and leaked its trade secrets, it has three options: (1) file a labour arbitration against the ex-employee for breach of the non-compete agreement, and then file a lawsuit against the ex-employee and his or her new employer for their misappropriation of its trade secrets; (2) file a labour arbitration and an infringement lawsuit simultaneously; and (3) only file an infringement lawsuit against both the ex-employee and his or her new employer. The authors suggest the company, based on details of a specific case and comprehensive assessment, should form an appropriate strategy to enforce its rights and adopt a suitable approach to gather evidence and proceed with legal action. 作者：安杰律师事务所合伙人李斌馨、 合伙人刘正赫 |
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