As more employees continue to work from home on a sustained basis, there is a heightened risk of trade secrets or confidential information leaking or being misused. It is important for businesses to understand the protection afforded at law in respect of their information and to consider ways to ensure it is protected. We take a look at some of these issues.
Questions
Is there a statutory definition of trade secrets or confidential information?
Hong Kong No.
Yes.
Indonesia
Singapore No.
Yes.
Thailand
There is no statutory definition of "trade secrets" or "confidential information", which are concepts governed by common law.
In deciding whether information constitutes confidential information, the following factors are taken into account: (a) the nature of the
employment; (b) the nature of the
information; (c) whether the employer
impressed on the employee the confidential nature of the information; and (d) whether the information can be easily isolated from other information which the employee is free to use or disclose.
Under the Law No 30 of 2000 on Trade Secrets (Trade Secrets Law), the phrase "trade secrets" means information in the technology and/or business field that is inaccessible to the public, has economic value, has its confidential nature maintained by the employer. This includes methods of production, methods of processing and methods of selling.
Although there is no clear definition of confidential information, the Trade Secrets Law provides that information is considered as confidential if it is only accessible to limited number of persons or is generally inaccessible to the public.
There is no statutory definition of "trade secrets" or "confidential information", which are concepts governed by common law.
To bring a claim for breach of confidence, the information must have the necessary quality of confidence about it and imparted in circumstances importing an obligation of confidence. Once this is satisfied, an action for breach of confidence is presumed and the defendant must show that their conscience is not affected in the circumstances (eg they come across the information by accident).
Under the Thai Trade Secrets Act B.E. 2545 (2002) (TSA), the term "trade secrets" means "trade information" which is confidential (ie not widely known), has commercial value due to its secrecy and has its confidential nature protected by its owner.
Under the TSA, "trade information" can take in any form as long as it conveys statement, story, fact, etc. and includes formula, form, compilations or assembled works, programs, methods, techniques or processes.
To show that the information has the necessary quality of confidence, the information
1
Questions
Hong Kong
Information amounting to a trade secret must be: (a) used in a trade or
business; (b) confidential, i.e. not
already in the public domain; (c) easily isolated from other information which is not considered confidential; (d) liable to cause real or significant harm to the owner, if disclosed to a competitor; and (e) treated as being confidential (e.g. via controls and access restrictions, instructions to employees etc.).
Indonesia
Singapore
must not already be available to the public at large.
In deciding whether a piece of information is a trade secret, the following factors are taken into account: (a) the nature of the
employment; (b) the nature of the
information itself; (c) whether the employer
impressed on the employee the confidentiality of the information; and (d) whether the information can be easily isolated from other information which the employee is free to use.
Thailand
During and after employment, are employees required by law to protect confidential information or not to use trade secrets?
Yes in part.
During the course of employment, employees owe an implied duty to maintain confidentiality of information belonging to the employer and not to use trade secrets.
However, upon termination of employment, such implied duty becomes more restricted in
There is no specific obligation in the Indonesian labour laws which requires employees to protect confidential information or not to use trade secrets.
However, under the Trade Secrets Law, the employer, as the owner of trade secrets or license recipient, has a right to commence an action for direct damages and injunctive relief
Yes in part.
During the course of employment, employees owe an implied duty to maintain confidentiality of information belonging to the employer and not to use trade secrets.
However, upon termination of employment, such implied duty becomes more restricted in
There is no specific obligation in the Thai labour laws which requires employees to protect confidential information or not to use trade secrets.
However, employees are generally prohibited from intentionally causing damage to the employer and from committing any act in a manner incompatible with the
2
Questions
Hong Kong
scope and only applies insofar as the information amounts to trade secret.
Thus, it is important for employers to require employees to enter into a clearly drafted non-disclosure agreement as a condition of employment or to include a confidentiality protection in the employment contract.
Where the parties enter into a separation agreement upon termination of employment, such confidentiality provision can also be included in the agreement.
Indonesia
Singapore
against any person (including an employee) who deliberately and without authorisation discloses their trade secrets.
It is important for employers to require employees to enter into a clearly drafted nondisclosure agreement as a condition of employment or to include a confidentiality protection in the employment contract.
Where the parties enter into a separation agreement upon termination of employment, such confidentiality provision can also be included in the agreement.
scope and only applies insofar as the information amounts to trade secret.
Thus, it is important for employers to require employees to enter into a clearly drafted non-disclosure agreement as a condition of employment or to include a confidentiality protection in the employment contract.
Where the parties enter into a separation agreement upon termination of employment, such confidentiality provision can also be included in the agreement.
Thailand
due and faithful discharge of the employee's duty.
Further, under the TSA, any person who discloses trade secrets belonging others which results in such information no longer remaining trade secrets with malicious intent to cause damage to the business of the trade secrets' owner is liable to imprisonment for a term of not exceeding one year, or to a fine of not exceeding THB 200,000, or to both.
It is important for employers to require employees to enter into a clearly drafted nondisclosure agreement as a condition of employment or to include a confidentiality protection in the employment contract.
Where the parties enter into a separation agreement upon termination of employment, such confidentiality provision can also be included in the agreement.
3
Questions
Who owns IP rights created by employees in the course of their employment?
Hong Kong
Under the common law, the employer owns all IP rights that its employees create in the course of their employment, unless otherwise agreed.
There are also various statutory provisions applicable to the ownership of IP rights, including: (a) section 14 of the Copyright
Ordinance and section 3(3) of the Registered Designs Ordinance which similarly provide that an employer is treated as the first owner of the rights in work product created by employees in the course of employment, unless otherwise agreed by the parties; and (b) section 57 of the Patents Ordinance which provides that an invention by an employee is taken to belong to the employer if it was made in the course of the employee's normal duties and in circumstances where the invention might reasonably be expected to result from
Indonesia
This depends on the specific type of IP rights created.
Under the Law No. 28 of 2014 on Copyrights, if a work is made within an employment relationship or based on an order, the party who creates such work is deemed to be the `creator' and the `copyright holder' unless otherwise agreed.
Under the Law No. 13 of 2016 on Patents, the party who is entitled to the patent for an invention produced in an employment relationship is the party who assigned the work (even though the inventions are created by employees using the employer's facilities), unless otherwise agreed.
Where the employer's business is such that protection of employee rights is crucial, these rights should be expressly dealt with either in the employment contract or in some other agreements.
Singapore
Under the common law, the employer owns all IP rights that its employees create in the course of their employment, unless otherwise agreed.
There are also various statutory provisions applicable to the ownership of IP rights, including: (a) section 30(6) of the
Copyright Act which provides that an employer is entitled to any copyright subsisting in the work product created by employees in the course of employment (specific rules apply relating to literary work etc. for publications and photograph etc. taken pursuant to an agreement); (b) section 49(1)(a) of the Patents Act which provides that an invention by an employee is taken to belong to the employer if it was made in the course of the employee's normal duties and in circumstances where the invention might reasonably be expected to result from
Thailand
This depends on the specific type of IP rights created.
Under the Thai Copyright Act B.E. 2357 (1994), an employee owns the copyright for a work that has been created in the course of employment unless otherwise agreed in writing. However, an employer is entitled to communicate such work to the public in accordance with the purpose of employment.
Under the Thai Patent Act B.E. 2522 (1979), an employer has the right to apply for a patent for the employee's invention in the course of employment, unless the employment contract provides otherwise.
Where the employer's business is such that protection of employee rights is crucial, these rights should be expressly dealt with either in the employment contract or in other applicable agreements.
4
Questions
Hong Kong
the carrying out of their duties.
Where the employer's business is such that protection of employee rights is crucial, these rights should be expressly dealt with either in the employment contract or in a separate agreement.
Indonesia
Singapore
the carrying out of their duties.
Where the employer's business is such that protection of employee rights is crucial, these rights should be expressly dealt with either in the employment contract or in a separate agreement.
Thailand
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