Compulsory Licensing of Trade Secrets

 The Law Commission (LC) recently released its report no. 289- “Trade Secret and Economic Espionage”. (Part 1, Part 2and Part 3). SpiceIP has posted on this , some points:

The LC report noted the failure of attempts to get companies to voluntarily license TS during COVID-19. As a result, it proposed a separate section in the Protection of Trade Secrets Act, 2024 (‘Draft Bill’) for CL of TS. Certain key features of the provision are- 

• The Government can issue CL for use of TS to third parties or the Government in a situation of public emergency which involves substantial public interest. 
• The recipient of the TS will be duty-bound to not disclose confidential information during or after the expiry of the license. 
• The Government can terminate the license after such a public emergency has ceased to exist. 

The LC has sought to balance the public interest with the interest of a licensor by narrowly construing ‘disclosure’ to mean disclosure only to a third party under strict obligations of confidentiality. It does not mandate public disclosure of the TS since the commercial value of the information derives from its secrecy. 

Trade secret dispute between LG Chem and SK Innovation - Lithium Ion Battery

LG Chem’s petition to ITC alleges that SK Innovation hired more than 70 key employees from LG Chem between 2016 and 2018, including dozens of engineers who were involved in the design, development and manufacture of this advanced battery technology used in electric vehicles, as well as other consumer electronics applications. LG Chem further alleges that, based on its internal audit of the company’s data and communication records, SK Innovations conspired with LG Chem employees to secretly download trade secrets prior to joining SK Innovation, solicited detailed descriptions of their work and trade secret information in resumes for employment, and contacted current LG Chem employees requesting trade secrets therefrom. The alleged scale of the misappropriation spans many years, many employees and many aspects of LG Chem’s trade secrets, from research and development of lithium ion battery technology through manufacturing, testing and sales. Using the stolen technology, LG Chem alleges, SK Innovations won a lucrative deal with Volkswagen, beating out LG Chem for that contract, with losses estimated at over $1 billion.

International Trade Commission (ITC) , on Wednesday, barred the import of batteries meant to power the new electric Ford F-150 pickup, the most popular line of vehicles in the country for four straight decades. The batteries, made by South Korean giant SK innovation (SKI), were also intended for VW’s new crossover SUV, called the ID.4, which the German carmaker has planned to make in the U.S. to compete with the Tesla Model Y. But now, both companies must find another battery.

Source: 

https://www.wiggin.com/wp-content/uploads/2020/01/Kasdan_Cho_IAM_Trade_Secrets-1.pdf

https://themobilist.medium.com/how-two-south-korean-companies-have-managed-to-terrify-ford-vw-and-the-biden-administration-2d498ae92142

Trade Secrets stolen by Ketankumar Maniar for employment in India

This case makes an interesting reading. The facts of the case clearly establish unauthorized downloading of intellectual property classified as Trade secrets. But , it is not clear why Ketankumar did it. He did not sell it in the market or pass it on to new employer. The case file says, he intended to get a job in India based on this. 
That is interesting as there is no medical device manufacturer in India who is competing with the US firm BD and thus could profiteer from these trade secrets related to disposable pen injector. Is it a corporate espionage or related to his patent 8029482.
Case File: