[1] The purpose of prohibiting infringement of trade secrets and determining the duration of protecting trade secrets

[2] Where the period for protection of trade secrets has expired, whether the right to claim prohibition of infringement terminates (affirmative) / Where the termination date of the period for protection of trade secrets cannot be determined, whether the period for prohibition of infringement may not be determined (affirmative), and how the party against whom the prohibition order was issued is dissatisfied therewith

[1] The purpose of prohibiting infringement of trade secrets is to prevent an infringer from taking unfair advantage of his/her superior position than a fair competitor by such infringement, and to enable the owner of the trade secret to return the trade secret to the original location if the infringement had not occurred. The prohibition of infringement of trade secrets should be made within the scope of the trade secret protection period in order to achieve this objective. The trade secret protection period should be determined by comprehensively taking account of the substance and difficulty of the trade secret, whether the infringer or another fair competitor could obtain the trade secret in a legitimate manner such as its own development or reverse design, the time required for acquiring the technical information by the holder of the trade secret, the development speed of relevant technology, the human and material facilities of the infringer, the freedom of occupation selection and the freedom of business operation by the former employee, etc.

[2] As a result of the trial at a fact-finding court, the right to claim prohibition against infringement of a trade secret still remains during the remaining period, and the right to claim prohibition expires after the period of protection of the trade secret expires. However, if it is impossible to determine the expiration period of protection of the trade secret because the infringer or other fair competitors are not likely to acquire the trade secret or develop the same technology as the trade secret in a legitimate manner such as independent development or reverse design, etc., the period of prohibition may not be determined. Such prohibition is not permanently prohibited on the ground that the period of prohibition is not determined, and the party against whom the order of prohibition is issued may file a dispute through objection to provisional disposition, revocation, or lawsuit of objection by asserting and proving the circumstance that the period of

[1] Article 10 of the Unfair Competition Prevention and Trade Secret Protection Act / [2] Article 10 of the Unfair Competition Prevention and Trade Secret Protection Act, Article 300 of the Civil Execution Act

[1] Supreme Court Decision 96Da16605 delivered on December 23, 1996 (Gong1997Sang, 501) Supreme Court Decision 97Da24528 delivered on February 13, 1998 (Gong1998Sang, 715)

[Defendant-Appellant-Appellee-Appellant]

Respondent 1 and two others (Law Firm Dan, Attorneys Park Jong-mun et al., Counsel for the defendant-appellant)

Seoul High Court Order 2018Ra20045 dated October 30, 2018

All reappeals are dismissed. Expenses incurred in reappeals are borne by the re-appellants.

The grounds of reappeal are examined (to the extent of supplement in case of supplemental appellate briefs not timely filed).

1. The purpose of prohibiting infringement of trade secrets is to prevent an infringer from taking unfair advantage of his/her superior position than a fair competitor by such infringement, and to enable the owner of the trade secret to return the trade secret to the original position if the infringement had not occurred. The prohibition of infringement of trade secrets shall be made within the scope of the protection period of the trade secret in order to achieve this objective. The trade secret protection period shall be determined by comprehensively taking into account the substance and difficulty of the trade secret, whether the infringer or another fair competitor could obtain the trade secret in a legitimate manner such as its own development or reverse design, the time and time required for acquiring the technology and information of the person holding the trade secret, the development speed of relevant technology, the human and material facilities of the infringer, the freedom of occupation selection of the former employee, and the freedom of business activities (see, e.g., Supreme Court Decisions 96Da1605, Dec. 23, 1996; 97Da24528, Feb. 13, 1998).

As a result of the fact-finding hearing, the right to claim prohibition against infringement is recognized for the remaining period when the protection period of trade secrets remains, and the right to claim prohibition expires when the protection period of trade secrets has already been expired: Provided, That if it is impossible to determine the termination period of the protection period of trade secrets because the infringer or other fair competitors are not likely to obtain the trade secrets or develop the same technology as the trade secrets in a legitimate manner such as independent development or reverse design, etc., the prohibition period may not be determined. As such, the prohibition period is not permanently prohibited on the ground that the prohibition period is not determined, and the party against whom the prohibition order is issued may file a dispute through a preliminary disposition, revocation, or lawsuit of objection by asserting and proving the fact

2. The lower court rejected all of the petitioners’ applications on the ground that, although the respondent used the instant technical file, the period required for the applicant to obtain the instant technical information, the content of the “Guidelines for Evaluation of Medical Appliances containing call halogen” published after the development of the instant technical information, the circumstances disclosed through the applicant’s patent specification, the circumstances disclosed by the respondent’s patent specification, and the knowledge and development ability of the respondent when the respondent 1 retired from office and the respondent 9 years elapsed after the leakage of the instant technical file, the claim for prohibition of infringement of trade secrets was extinguished.

Examining the record in light of the aforementioned legal principles, the lower court’s determination is justifiable, and did not err by misapprehending the legal doctrine on the protection period of trade secrets, as alleged by the applicant.

3. The re-appeal by the applicant is without merit, and it is all dismissed. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Lee Dong-won (Presiding Justice)