Trade secret laws and regulations in Poland

Yes, the Directive was implemented by the Act of 5 July 2018 on amending the Act on Combating Unfair Competition and certain other acts, which was published in Journal of Laws no.1637/2018 and came into force on 4 September 2018.

There are several other legal acts relating to trade secrets in Poland, including the Polish Civil Code, Criminal Code, and Labour Code. To some extent, the issues of trade secrets are also considered in the Polish Civil Procedure Code, the Industrial Property Law, the Competition and Consumer Protection Act, the Banking Act, etc. 

According to the Polish Act on Combating Unfair Competition, trade secrets are defined as: 

• technical, technological, organisational information or other information having an economic value, which – as a whole or in a particular combination and collection of elements – is not commonly known to people usually dealing with this type of information or is not easily accessible to such people, provided that the person authorised to use the information or have access to it took steps, with due diligence, to keep them confidential.

The definition of trade secrets indicated above requires that the person entitled to use or have disposal of such information take steps, with due diligence, to maintain its confidentiality. Therefore, reasonable and appropriate measures must be implemented to keep this information secret. This involves using both technical (e.g. access control, IT blockades, etc.) and legal (e.g. conclusion of a non-disclosure agreement or NDA, verbal warnings, warnings on documents, in correspondence, etc.) instruments of protection.  

Yes, trade secrets are both transferable and licensable. 

The licensing of trade secrets by an entity other than the owner should be in line with the scope of authorisation granted by the owner. Moreover, if a given entity is not the owner, it cannot transfer trade secrets that do not belong to it.

Yes.

The disclosure, use, or acquisition of another party’s information constituting a business secret constitutes an act of unfair competition and should therefore be considered an infringement of trade secrets.

The acquisition of information constituting a business secret is an act of unfair competition, in particular when it occurs without the consent of the party authorised to use the information or with access to it, and when the acquisition is a result of unauthorised access; appropriation; copying of documents, items, materials, substances, or electronic files that contain this information or enable interference with its contents.

Use or disclosure of information constituting a business secret is an act of unfair competition, particularly when it occurs without the consent of the party authorised to use or have disposal of it and infringes the obligation to limit its use or disclosure resulting from the law, a legal act, or another act, or if it was effected by a person who obtained the information by performing an act of unfair competition.

The acquisition, use or disclosure of a trade secret will also be considered unlawful whenever a person, at the time of the acquisition, use or disclosure, knew – or with due diligence could have known – that the trade secret had been obtained directly or indirectly from another person who was using or gaining access to it unlawfully.

Moreover, the use of information constituting a business secret involving the producing, offering, introducing into trading, as well as importing, exporting, and storing of goods for this purpose is considered an act of unfair competition if the person performing the indicated activity had knowledge – or with observance of due diligence – could have had knowledge about the fact that the properties of the goods, including their aesthetic or functional properties, the process of their manufacture or sales were shaped to a significant extent following the unlawful acquisition, use or disclosure of a trade secret.

A trade secret owner may apply to the court for certain procedural measures, such as securing evidence, and a disclosure or request for information concerning the origin and distribution networks of the infringing goods or services, which is necessary to assess the scale of the infringement and calculate potential monetary relief. The above-mentioned measures may be issued both during and prior to the court proceedings. 

In terms of interim measures, general rules of security for claims (i.e. interim injunction proceedings) set out in the relevant provisions of the Polish Civil Code will apply. With respect to the proceedings regarding infringement of the trade secret, the court may issue an interim injunction by (i) ordering the defendant to cease offering, introducing to the market, advertising, importing, exporting the products made/produced/manufactured with the use of the trade secret; (ii) ordering the seizure of such products, for the duration of the main proceedings. Also, specifically in relation to trade secrets, the Polish Civil Procedure Code sets out that in cases specifically concerning the infringement of trade secrets, the court may order the obliged party to deposit an appropriate sum of money with the Ministry of Finance’s deposit account instead of the previously granted security in the form of prohibitions, injunctions or seizure of movable property. However, such an amendment of the previously granted security is only possible upon the obliged party’s prior request. 
With regard to the final measures in the case of trade secret infringements consisting in an act of unfair competition, the Court may order:

• the discontinuation of the illegal practice;
• the removal of the effects of the illegal practice;
• that a relevant statement be made once or several times, specifying the required form and content of such a statement;
• the repair of the damage caused, on general terms;
• the surrender of the wrongly acquired benefits, on general terms;
• the awarding of an appropriate amount of money for social (e.g. charitable) purposes associated with the support of Polish culture or protecting the national heritage if the unfair trading practice was culpable.

In the case of an infringement of trade secrets, the court may also specifically order the defendant: 

• to publish information on the ruling or its content in the indicated scope and manner;
• to pay the appropriate remuneration in an amount not higher than the remuneration that would have to be paid if the trade-secret holder’s consent to use the trade secret had been sought by the infringing party, for the duration that it is a secret;
• to pay a sum in the amount corresponding to the remuneration, which would have had to be paid if the trade-secret holder’s consent to use the trade secret had been sought by the infringing party. 

Moreover, the relevant provisions provide for criminal liability for an infringement of trade secrets: a penalty of a fine, restriction of liberty and imprisonment for up to two years. 

Yes, the court must set a time-limit (no longer than two weeks) by which the claim for a substantive decision must be filed with the court under pain of cancellation of the interim measures and may result in the entitled party becoming liable for damages. 

Yes, upon a motion of the defendant, instead of ordering the cessation of the infringement or the removal of its effects, the court may order that an appropriate remuneration be paid in an amount not exceeding the remuneration, which would have had to be paid if the trade-secret holder's consent to use of the trade secret had been sought by the infringing party, for the duration that it is a secret, if:

• at the time of the use or disclosure of the trade secret, the defendant was not aware – or with due diligence could not have been aware – that the information had been obtained from another person who was using or disclosing the trade secret unlawfully;
• execution of the cessation would cause the defendant disproportionate harm; and
• the obligation to pay remuneration does not prejudice the legitimate interest of the claimant. 

Interim measure – an interim injunction for the period of the main infringement proceedings is granted as a rule ex parte (i.e. the obliged party does not have the opportunity to present its arguments in any form before the first instance decision is taken). However, the Court may always order that the decision be issued only once a hearing has been scheduled.

In cases where the court – instead of granting interim measures in the form of prohibitions, injunctions or seizure of goods – orders the obliged party to deposit in the account of the Minister of Finance an appropriate sum of money to secure the claims, such an order may be made only after the court hearing.

Financial compensation may be ordered in the form of a repair of the damage caused on general terms. 

Under Polish law, damages are intended to restore the damaged party to the position it would have been in if the infringement had not occurred. Therefore, damages are calculated by considering both the trade-secret holder’s actual damage incurred and the loss of his profits. 

However, in the case of performing an act of unfair competition constituting a breach of a business secret, the authorised party may demand, instead of the repair of damages on general terms (as indicated above), remedying the damage by paying a sum corresponding to the remuneration that, at the time it was sought, would be due for the authorised party consenting to the use of information constituting a business secret (e.g. the amount of hypothetical royalties or fees). 

The limitation period for claims of unfair competition is normally three years for each separate infringement. In terms of claims for damages, the limitation period is three years from the date when the injured party learned – or with due diligence – could have learned about the damage, but in any case no longer than ten years from the date when the event causing the damage occurred. 

The limitation period is interrupted, and a new limitation period will begin running i) due to any action before a court or other authority competent to hear cases or enforce claims of a particular type or before an arbitration tribunal, taken directly to assert or establish, or to satisfy or secure a claim; ii) if a claim was acknowledged by the person against whom the claim may be pursued; or iii) as a result of initiating mediation.

The course of limitation shall not commence, and where it commenced it shall be suspended for any claims where due to force majeure the entitled person may not pursue them before a court of law or another organ appointed to try cases of a given kind, for the duration of the impediment.

Yes, there are some measures aimed at preserving confidentiality of trade secrets available in the course of any proceedings. First of all, the court may, upon a motion of a party, conduct a hearing behind closed doors (without public access) if circumstances constituting a trade secret may be revealed. 

During the proceedings before the Court of Competition and Consumer Protection, the order to disclose trade secrets to the opposing party may be issued only under specific conditions (i.e. upon the trade-secret holder’s consent). Moreover, the court may – upon a party’s request or ex officio – restrict the other party’s right to access the evidence if its disclosure would jeopardise the protection of the trade secret. 

Moreover, according to Polish law, anyone using or disclosing a trade secret, which they learned of while participating in civil proceedings related to claims for an infringement of a trade secret, or by having access to the files of such proceedings, will be subject to a fine, restriction of freedom or prison for up to two years.

Under Polish law, the disclosure, use, or acquisition of information constituting a business secret is not an act of unfair competition if it occurred in order to protect a justified legally protected interest, under the exercise of freedom of expression, or in order to disclose irregularities, infringements, actions in breach of the law for the protection of the public interest. This also applies if the disclosure of information constituting a business secret towards representatives of employees in connection with their performance of functions on the basis of legal provisions was necessary for the proper performance of these functions.

If a claim bringing the charge of unfair competition (including one related to an infringement of trade secrets) is manifestly unfounded, the court may, at the defendant’s request, order the plaintiff to make one or more statements of appropriate content and form. Moreover, a defendant who, as a result of such action, suffered damage may claim its compensation on general terms.

No separate legal proceedings are required. However, both the request for a statement of appropriate content and form and a claim for damages for a manifestly unfounded action may be asserted in separate legal proceedings as well. 

Employers can and should enter into a contractual confidentiality agreement with their employees, which may cover both the duration of the employment relationship as well as the period after its termination. Confidentiality provisions can either be part of the employment contract or be regulated in a separate confidentiality agreement.

In any case, the employer should be able to prove that he undertook measures to preserve the confidentiality of the information. This means that such an agreement should, at least, specify categories of information requiring confidentiality (e.g. construction plans, client lists, etc.) and define actions that will be specifically considered a breach of the confidentiality agreement.
The parties may also agree that breaching confidentiality obligations after termination of the employment contract is subject to a contractual penalty (contractual penalties are prohibited during the employment relationship as the law comprehensively regulates an employee’s liability). The law neither regulates the maximum length of the post-contractual confidentiality obligations nor provides for any compensation obligations on the employer’s side. However, we recommend introducing time limits on post-contract confidentiality obligations since an employee may terminate open-ended restrictions with notice.

Furthermore, the employer may adopt internal regulations on the handling of confidential information that may be subject to the possible co-determination rights of the trade union. 

Confidentiality obligations can also be the subject of agreements with trade unions. 

Yes, this results from the employee’s obligation to care for the interests of the employing establishment, protect its property and preserve the confidentiality of information the disclosure of which could cause damage to the employer. The scope of this obligation is broader than the obligation to keep trade secrets confidential itself.

In case of B2B contractors, the law also prohibits the misuse of trade secrets.

However, we do not have such explicit legal regulations regarding individuals employed other than from an employment or B2B contract basis or as agency staff. 

In addition to any post-contractual confidentiality agreements and general internal regulations on handling confidential information, the employer may consider the following:

• Broadening internal regulations on confidentiality by:
  • prohibition to use company assets for private purposes,
  • IT security requirements, including prohibition to store company data on private devices or send company data to private email inboxes,
  • rules on using company assets during remote work to ensure the confidentiality of company information,
  • rules on employee monitoring, including monitoring of company premises or employee business emails;
• Conducting regular trainings, which should raise awareness in the workforce about the importance of protecting trade secrets and confidential information.

Potentially, but it will depend on the circumstances – see our Expert Guide to Whistleblower Protection and Reporting Channels for more information.

Yes, as a rule the employer is directly liable for the infringement of a third party’s trade secrets by its employees. However, the employer may seek the reimbursement of the incurred costs from the employee for up to his or her three-month remuneration unless it resulted from the employee’s intentional fault or gross negligence in which case, the employee’s liability is not capped.

Firstly, the parties should precisely define what is to be considered a trade secret and confidential information between them, and what protective measures should be applied to secure its confidentiality and how that information is to be properly disclosed between them. It is also advisable to specify what actions will constitute a breach of a trade secret and to whom, when and how such information may be provided. Moreover, it is crucial to determine what rights each party has and what kind of consequences will ensue for unlawful use of trade secrets. Parties should also consider setting a contractual penalty for a breach since, in practice, proving the extent of the damage may often be complicated.

The contractual rights and obligations regarding the protection of trade secrets may be included in the main contract. However, in commercial practice it is common that parties set out detailed provisions on the exchange of trade secrets in a separate agreement (e.g. a non-disclosure agreement).

Appropriate definition of confidential information – It is common practice in contracts that parties indicate a broad and general scope of information subject to confidentiality obligations. In fact, such a provision will not properly secure the trade-secret holder’s interests and will make it difficult to prove a breach. Therefore, the parties should precisely indicate what kind of information and data are deemed confidential (e.g. a database of clients and contractors, formulas or technical specifications of the company’s products, etc.). 

Adequate measures of trade-secret protection – Typically non-disclosure agreements/clauses include the obligation to use confidential information only in connection with the agreement and in order to perform the activities and obligations arising from them. However, such standard provisions are often insufficient and, therefore, it is advisable to lay down appropriate measures of trade-secret protection (e.g. the manner of handling documents and electronic media storage containing confidential information after the termination of the agreement). 

Contingency plan – Parties should determine the course of action in the event of a trade secret infringement in order to limit negative consequences as much as possible. In practice, however, parties often overlook this matter. 

There are a few important aspects to consider in terms of cross-border protection of trade secrets. Firstly, as long as the protection of trade secrets in the European Union has been harmonised by Directive (EU) 2016/942, third countries may not provide for a similarly extensive regulation. Therefore, it is essential to consider whether the chosen applicable law and jurisdiction is sufficient from the perspective of trade-secret protection. Parties should be specifically aware of those jurisdictions where the risk of unlawful disclosure exist, and the law does not provide for procedural measures to mitigate the consequences of a potential infringement of trade secrets.

Polish civil law provides for the possibility of including in a contract a penalty clause under which damage resulting from the non-performance or improper performance of a non-monetary obligation are to be remedied by the payment of a specified sum of money. As a result of including a penalty clause in a contract, a party only has to prove that a breach has occurred, without having to prove the incurred damage, which significantly facilitates claims against the infringer. In general, claiming damages in the amount exceeding the contractual penalty is inadmissible, unless the parties have agreed otherwise. Therefore, it is necessary to stipulate such a possibility in the contract in case the contractual penalty is insufficient to cover the damage.