영업비밀의 쟁점 및 효과적 보호방안에 대한 검토

Legal Issues and Effectual Protection in Trade Secrets

&nbsp;&nbsp;During the past years, a number of trade secrets infringement cases have drawn considerable media attention as they involved illegal disclosure of valuable technology owned by some of the major Korean corporations. With the rapid growth of the information and technology industry in Korea, there is a growing awareness of the significance of trade secrets as valuable corporate property among the companies and individuals investing heavily in the research and development of state-of-the-art technologies.<BR>&nbsp;&nbsp;Notwithstanding the importance of trade secrets, however, Korean law had traditionally been scarcely protective of trade secrets of companies. It is only recently, in the wake of several major trade secret infringement cases in Korea, that the Korean government began to take some meaningful steps to strengthen its legal regime for the protection of trade secrets. Specifically, in 2004, the Korean government amended the Trade Secret Protection Act to further strengthen the protection of trade secrets.<BR>&nbsp;&nbsp;Protection of trade secrets is important in the sense that once trade secrets are disclosed to a third party, they experience a substantial loss in their economic utility due to their confidential nature. Furthermore, the loss of economic utility is a serious blow to the enterprise that owns trade secrets as it materially damages the competitiveness of such enterprise in the market.<BR>&nbsp;&nbsp;Based on experience of representing numerous corporations in trade secret infringement disputes, we would advise the owners of trade secrets to consider taking the following measures in order to protect their trade secrets from illegal disclosure or use:<BR>&nbsp;&nbsp;In case a licensor enters into a license agreement with a prospective licensee concerning a technology that is prone to illegal disclosure, the licensor should consider inserting a non-disclosure provision in the license agreement which would prohibit the licensee from unauthorized disclosure of the trade secrets transferred to the licensee under the license agreement. In this regard, it should be noted that questions may arise under Korean law concerning the issue of whether if the non-disclosure obligation has a specific term, the licensee, after the expiration of such term, is entitled to actively disclose the trade secrets to a third party without payment of any royalties to the licensor. In practice, there have been instances where licensees have engaged in freely using the trade secrets or even licensing the trade secrets to a third party after the expiration of the term of the non-disclosure obligation.<BR>&nbsp;&nbsp;To prevent any illegal disclosure of trade secrets internally by officers or employees, an enterprise may set up employment regulations or require a written undertaking from new or resigning officers or employees to the effect that such officers or employees shall not illegally disclose or use the trade secrets of the enterprise during or after the term of their employment. Additionally, it is also possible for the enterprise to prohibit its officers or employees from being employed by any competitors of the enterprise or from competing with the enterprise themselves for a specific term after the term of their employment. In this regard, it is important to note that the term of such non-compete restriction should be a reasonable one, as an unreasonably lengthy term of a non-compete restriction could be deemed as an unreasonable usurpation on such officer&quot;s or employee&quot;s freedom to choose an occupation under the Korean Constitution and thus, deemed unenforceable.<BR>&nbsp;&nbsp;An enterprise that owns trade secrets is recommended to establish and operate trade secret management rules. Moreover, the enterprise should consider designating a person responsible for protection of trade secrets of the enterprise and clearly defining the scope of his responsibilities. It is also helpful to provide regu