Trade Secret Trade Secret

Trade secret protection has been a critical and challenging issue for all companies doing business in China given the increasing white–collar crimes involving trade secret theft. On one hand, every company needs to establish a robust internal system to prevent potential leakage. On the other hand, it is crucial to act quickly and effectively to obtain proper remedies when any misappropriation is detected. Identification of the trade secrets in question that meet the judicial requirements for protection, collection of admissible infringement evidence and proof of the damages suffered are all difficult issues under the current legal framework in China. This is why successful trade secret case examples are fewer than other IP cases and it always calls for creative strategizing and professional handling.

GEN fully recognizes the importance and sensitivity of trade secret protection for clients. GEN’s special Trade Secret Protection Force is particularly capable of helping clients design multi-layer protection strategies for their trade secrets including a selective combination of criminal/administrative proceedings and civil actions based on case facts. GEN attorneys have abundant experience in handling trade secret cases, many of which have yielded satisfactory results (including successful preliminary injunctions against clients’ former employees). We are able to guide our clients to both take best practices on the preventive side and also manipulate the complex enforcement system to effectively protect trade secrets in China. 

Our Services

• Establishment of Systems - assist clients with establishing and optimizing a robust trade secret protection system that fits each company’s specific situation including physical and digital measures and relevant guidelines for implementation;

• Drills - formulate an emergency reaction mechanism to quickly respond and recover losses to the extent possible in case any trade secret is disclosed;

• Assist clients with formulating and improving their non-compete agreement management system and risk prevention guidelines;

• Assist clients with formulating plans and strategies to collect evidence from employees who breach the non-compete restrictions;

• Collect and preserve evidence in non-compete disputes in order to facilitate the subsequent criminal and civil enforcement actions for trade secrets;

• Coordinate criminal, administrative and civil actions to support one another to achieve evidence collection and preservation for trade secret enforcement;

• File criminal complaints - particularly in the event of criminal concurrence, and confirm the most appropriate crime to initiate the prosecution procedure quickly based on our specialized legal analysis;

• Pursue civil actions (including applying and obtaining preliminary injunctions), with special focus on optimizing strategies for evidence collection and preservation and dealing with cross-border trade secret disputes.

• Provided legal advice on multiple trade secret cases for multinational and domestic companies; coordinated investigation and evidence collection, criminal complaints, administrative enforcement and/or civil litigation (including preliminary injunctions).

• Led the establishment of confidentiality systems for multiple joint ventures, and provided employee training.

• Conducted multiple interviews with departing employees, and coordinated investigations against current and former employees, and business partners (including non-compete investigations); successfully protected company trade secrets from potential leakage by having the employees or partners involved sign undertakings to cooperate. 

• Represented a leading listed energy company in successfully prosecuting a trade secret stealer under Chinese Criminal Law based on remedial cost incurred by the right holder, before the US-China Phase One Trade Agreement and the subsequent judicial interpretations by the SPC codified the same rule.

• Represented a major multinational corporation in civil actions successfully obtaining a preliminary injunction against a former employee taking away trade secrets without approval.

• Represented a US company in conducting investigation and collecting evidence in a trade secret infringement case in relation to the manufacturing technology and method of wafers used in medical products in China. 

• Advised a multinational pharmaceutical company on legal action against its ex-employee in trade secret theft resulting in the first preliminary injunction order in trade secret litigation in China. The case was listed in the Top Ten IP Cases by the Supreme People’s Court.

• Advised a US pharmaceutical company in a trade secret parallel proceeding between the US and China resulting in the first preliminary injunction order before the Shanghai IP Court, and ultimately reached a favorable settlement.

• Co-Author of "Trade Secrets: Essentials that Foreign Companies Need to Know to Do Business in China", China Strategies IP Directory, Asia IP, May 2015.

• Assisted multiple Internet companies in developing effective trade secret protection systems.

• Provided legal services to a multinational company whose departing employees took away its trade secrets to join a competitor.

• Filed criminal complaints with the local police and achieved favorable results in a case where a former employee took away the company’s trade secrets and destroyed its software operating system.

• RFMD (U.S.), in trade secrets infringement disputes, which involves misappropriation of technical secrets in CMOS technology of mobile chip.

• Suzhou MicroArray Company, in patent infringement/patent ownership/trade secrets Misappropriation disputes, which involves in fingerprint technology in mobile chips.

• International Flavors and Fragrances (U.S.), in trade secrets and patent infringement/invalidation disputes.

• Solarcity (U.S.), in commercial contract disputes and trade secrets disputes, which involves electronic circuit technology of solar cell.

• GE, in trade secrets disputes and technology transfer and license, which involves electronic technology. 

• Represented leading Internet company in several trade secret infringement cases against former employees;

• Represented a leading battery company in a trade secret infringement case against former employees;

• Represented uCloudlink in a trade secret infringement case against Skyroam;

• Represented victims in many criminal cases;

• Provided legal opinion on the risk of trade secret infringement for a state-own energy group;

• Provided legal opinions on the risk of trade secret infringement for a glass manufacturer.

• Defending a self-driving company against its competitor's claim of trade secret infringement.