Establishment of a trade secret in a company: step-by-step instructions

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Elena Kazanok
Leading HR Specialist
Law Firm PRIORITY

Establishment of a trade secret in a company: step-by-step instructions

Many Russian companies include in the labor contract with employees a clause obliging them not to be employed by competing employers for at least a year after leaving. This restriction is illegal, but the employer can protect himself in another way - to oblige employees not to disclose certain information. To do this, the company needs to establish a legal regime of trade secrets. About what steps to take for this - in this post.

The practice of including in the employment contract conditions on the inadmissibility of employment to competitors came to us from the West. For example, the United States and many European countries often use a non-competition agreement. This document, which the employee signs when enrolling in the state, prohibits him from working in the same position with competitors or conducting personal practice for several years after leaving. The employer pays him a certain compensation for such a restriction on the employee’s freedom.

In Russia, such an agreement will be declared null and void because it violates the free right to work (article 37 of the Constitution of the Russian Federation), as well as article 2 of the Labor Code of the Russian Federation, which states that every citizen is free to choose his own work and has the right to dispose of his abilities to work, choose a profession and occupation.

The conditions to be included in the employment contract are specified in Art. 57 of the Labor Code of the Russian Federation. In addition to the mandatory conditions, this norm provides that, by agreement of the parties, the rights and obligations of the employee and the employer established by the labor legislation may be included in the labor contract. However, such conditions cannot worsen the position of the employee in comparison with the legislation and local acts of the employer. Therefore, the condition of the prohibition to work after being dismissed for a certain time in a company from the same field of activity (industry) as the employing company is illegal in our country and, even if included in an employment contract, should not be applied.

The only thing the company can do is to oblige the employee not to disclose company information, which constitutes trade secrets and know-how for a certain period of time. The employer can conclude such an agreement with the employee either as a separate document or include it as one of the conditions of the labor contract (Article 57 of the Labor Code of the Russian Federation). In any commercial organization, there is information that is not subject to disclosure. Such information includes personal data about the organization’s customers, its business and commercial partners, financial activities, market strategy, sales volumes, production technologies for certain types of products, etc.

Accordingly, access to this information is open to a certain circle of persons who are responsible for the non-disclosure of this information. In case of violation of the trade secret by the employee, he may be held liable for the following types of liability:

• criminal liability in the form of a fine of up to 1,000,000 (One million) rubles or imprisonment for up to 3 years ([DLMURL="https://base.consultant.ru/cons/cgi/online.cgi?req=doc ; base = LAW; n = 197507; div = LAW; rnd = 203280.5157626630600567 ;; ts = 1425221005203280974573517512892 "] Article 183 of the Criminal Code [/ DLMURL]);
• disciplinary action in the form of dismissal (paragraphs "c" paragraph 6 [DLMURL="https://base.consultant.ru/cons/cgi/online.cgi?req=doc;base=LAW;n=191626;div= LAW; rnd = 203280.26411204430943 ;; ts = 14252210002032802911539071387612 "] Article 81 [/ DLMURL] of the Labor Code of the Russian Federation);
• full liability in the form of full compensation for the damage (paragraph 7 [DLMURL="https://base.consultant.ru/cons/cgi/online.cgi?req=doc;base=LAW;n=191626;div=LAW ; rnd = 203280.26411204430943 ;; ts = 14252210002032802911539071387612 "], article 243 [/ DLMURL] of the Labor Code of the Russian Federation);
• civil liability in the form of damages ([DLMURL="https://base.consultant.ru/cons/cgi/online.cgi?req=doc;base=LAW;n=193157;div=LAW;rnd=203280.5543893873950383 ; ts = 14252201312032806748790543781671 "] Article 15 [/ DLMURL], [DLMURL =" https://base.consultant.ru/cons/cgi/online.cgi?req=doc;base=LAW;n=182110;div = LAW; rnd = 203280.5129441475703747 ;; ts = 14252209732032809135469803381993 "], article 1472 [/ DLMURL] of the Civil Code of the Russian Federation).

In this regard, in order to protect and protect the confidentiality of information constituting a commercial secret, the organization must establish a regime of commercial secret.

To establish a trade secret regime, an employer must take nine steps.

Step 1. We fix the list of information constituting a trade secret

To begin with, the employer must establish a list of information constituting a trade secret. It should be borne in mind that some regulatory legal acts limit this regime. So, it cannot be established in relation to the data specified in [DLMURL="https://base.consultant.ru/cons/cgi/online.cgi?req=doc;base=LAW;n=160225"] Art. 5 [/ DLMURL] of the Federal Law of July 29, 2004 No. 98-ФЗ "On Commercial Secret" (hereinafter - Law No. 98-ФЗ).

In particular, this information:

• contained in the constituent documents of a legal entity, documents confirming the fact of making entries about legal entities and IP in the relevant state registers;
• on environmental pollution, state of fire safety, etc .;
• on the number and composition of workers, the wage system, etc .;
• on the debts of employers for the payment of wages and other social benefits, etc.

The absence of a list of information constituting a commercial secret, or the non-familiarization of an employee with access to commercial secret with it, are considered by the courts as an occasion to side with the employee.

Case law example:

The employer filed a lawsuit in the court declaring the actions of the former employee to disclose confidential information unlawful, requested that the employee be ordered to stop the disclosure and recover damages. The court dismissed the lawsuit because the defendant was only acquainted with the local regulatory act establishing the regime of commercial secrets, but was not acquainted with the list of information constituting commercial secrets ([DLMURL="https://base.consultant.ru/cons/cgi/ online.cgi? req = doc; base = SOJ; n = 102611 "] The ruling of the Moscow City Court of June 22, 2011 in case No. 33-19046 [/ DLMURL]).

Step 2. We regulate the procedure for handling confidential information

The employer is obliged to establish a procedure for handling information constituting a trade secret and monitoring its observance. For this, a local regulatory act should be approved - for example, a regulation on trade secrets. In addition, the text of the document must contain instructions on working with confidential information, or they can be set out in a separate act, for example, instructions for organizing and maintaining paperwork of documents labeled “Commercial Secret”.

The absence of a local normative act regulating the regime of commercial secrets in the organization, as well as a list of information constituting commercial secrets, is the basis for the court to reinstate the employee who was dismissed for disclosing such information.

Step 3. We establish the list of positions of employees who have access to confidential information.

The employer is obliged to draw up a list of posts of employees with access to trade secrets and keep their records. The list should clearly reflect which employees have what posts and what information they have access to.

Company managers should have access to any information relating to the activities of the enterprise, unit heads - to information regarding the work of the unit entrusted to them, specialists - access to the amount of information that they need to fulfill their duties, technical personnel - minimum access to confidential information.

Step 4. We fix the rules on the regime of commercial secrets in job descriptions

Obligations to ensure the regime of commercial secrets should be reflected in the job descriptions of those persons who are admitted to such information. This step is necessary because according to [DLMURL="https://base.consultant.ru/cons/cgi/online.cgi?req=doc;base=LAW;n=160225"] hours 2 tbsp. 11 [/ DLMURL] of Law No. 98-FZ, an employee’s access to information constituting a trade secret shall be carried out with his consent, if this is not provided for by his labor duties. Therefore, in the absence of the obligations specified in the job description, the employer will not only be able to oblige the employee to fulfill the trade secret regime, but even make him work with such data.

Step 5. We put the stamp "Commercial Secret"

The material label “Commercial Secret” must be marked on the material media with the indication of the owner of such information - the full name of the organization and location (part 4 of article 6 of Law No. 98-FZ). When storing classified information in the form of an electronic document, the application of the Trade Secret heading is not always technically possible. In practice, the stamp is applied to accompanying documents presented in paper form and transmitted to the employee together with the holder of commercial secrets. It is possible to apply the neck in electronic form using footers.

Please note that the absence of the “Trade Secret” heading on documents constituting information of an industrial and commercial nature nullifies all efforts to protect information and allows employees to disseminate this information with impunity. The court will reinstate the employee who was dismissed for disclosing trade secrets if the documents containing confidential information did not have a corresponding stamp.

Case law example:

An employee fired for disclosing trade secrets filed a lawsuit for reinstatement. The court satisfied the lawsuit on the grounds that, on the defendant’s opinion, the information constituting commercial secrets was not marked with the commercial secrecy stamp indicating the holder of this information (full name and location of the legal entity).

Thus, the absence of the “Commercial Secret” stamp, registration of persons who gained access to information, is the basis to consider that there is no commercial secret regime with respect to documents disclosure of which the employer charged the plaintiff, and accordingly there is no violation thereof ([DLMURL=" https://base.consultant.ru/cons/cgi/online.cgi?req=doc;base=SOJ;n=102716""Cassation ruling of the Supreme Court of the Udmurt Republic of 05.25.2011 in case No. 33-1796 [/ DLMURL ]).

[SIZE=5][B] Step 6. We introduce employees to the rules established in relation to the trade secret regime [/B][/SIZE]

The employer is obliged to familiarize the staff with the rules established in relation to the regime of commercial secrets and with the list of information constituting commercial secrets. Lack of evidence of familiarization of employees with relevant local regulations entails the reinstatement of employees dismissed for disclosing trade secrets, which is confirmed by judicial practice.

[SIZE=5][B] Step 7. Obtain consent from employees regarding non-disclosure of information constituting a trade secret [/B][/SIZE]

In the event of a dispute, the employer must provide evidence that the employee undertook not to disclose information constituting a commercial secret ([DLMURL="https://base.consultant.ru/cons/cgi/online.cgi?req=doc;base=LAW; n = 189366 "] p. 43 [/ DLMURL] Resolution of the Plenum of the RF Armed Forces of March 17, 2004 No. 2“ On the Application by the Courts of the Russian Federation of the Labor Code of the Russian Federation ”). In practice, this is realized by signing employees the obligation to not disclose trade secrets.

See the form of the document in the attachment.

Step 8. We keep records of providing employees with information constituting a trade secret

To account for what kind of information is provided to specific individuals, it is possible to keep a register of the issuance of documents, other tangible media, and gaining workers access to various electronic resources. Keep in mind that in the event of a dispute, such a journal can serve as evidence of the use by employees of information constituting a trade secret. Lack of registration of persons who gained access to trade secrets is a common mistake of the employer.

Step 9. We create conditions for observing the trade secret regime

The employer must create conditions for the employee to comply with the trade secret regime - to provide him with material resources and technical capabilities. Moreover, the storage of documents and material information carriers can be different: in a safe, in lockable cabinets, in a specially equipped room, etc.

The organization can choose any form of storage acceptable to it. The main criterion should be the restriction of access to these documents, which is achieved, first of all, by the presence of locks on cabinets, rooms, the transfer of keys to strictly defined employees who are allowed to use the information. Please note that the employer needs to ensure not only the storage mode, but also the destruction mode of such documents. For example, use special devices to destroy documents (shredders).

Creating conditions for maintaining confidentiality of information includes restricting access to electronic resources.

These conditions include:

• encoding of messages transmitted via electronic or facsimile channels;
• the establishment of various devices that impede the removal of information during its passage through communication channels;
• data encryption;
• setting passwords to access certain information.

After the implementation of all these steps, the regime of commercial secrets is considered established from the date specified in the order on its establishment, or from the date of issue of the order itself.

In my opinion, the correct and carefully considered application of the trade secret regime will help the company protect confidential information from unfair competitors and employees.
Legal regime of trade secrets in the organization

 

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Trade Secrets Non-disclosure Agreement

An agreement on non-disclosure of trade secrets is a document that is signed by the employer on the one hand, and on the other hand, by an employee who has obtained access to materials, documents, and electronic media that constitute trade secrets. Do not forget that for this it is necessary to introduce trade secret regime , without it, this agreement is void.

An agreement on non-disclosure of trade secrets may be provided for by an employment contract with an employee, or may be executed in a separate document.

A sample agreement on non-disclosure of information constituting a trade secret can be downloaded by clicking on the button at the bottom of this page. It can be used for cases when, for example, a sales specialist leaves and takes a customer base with him. If this database was classified as information that constitutes a trade secret, and the organization introduced a trade secret regime, and thirdly, an agreement was signed with this specialist, then it will be possible to hold him liable for causing losses to the organization.
Elena Kazanok, Senior HR Specialist, PRIORITY Law Firm
Trade Secrets Non-disclosure Agreement

 

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AGREEMENT No. ___

on non-disclosure of information constituting a commercial secret of the Company Limited Liability Company


I AM, _______________________________________________________________________

Name and position of employee

I voluntarily accept the following obligations:

1. To fulfill the regime of commercial secrets established by the Company limited liability company;

2. Not to disclose information constituting a trade secret owned by the limited liability company “Company” and its counterparties, and without their consent not to use this information for personal purposes;

3. To transfer to the Company Limited Liability Company upon termination or termination of the employment contract, the material carriers of information used by the employee that contain information constituting a trade secret.

4. In writing, inform the immediate supervisor, and in his absence, the Sole Executive Body of the limited liability company “Company” about the following facts:

- about attempts to get information from me that is a trade secret;

- about any actions of company employees and other persons that pose a threat to compliance with the trade secret regime.

5. Not to disclose or transfer to third parties information constituting a commercial secret after the termination of employment with the Company.

6. Fulfill the requirements of regulatory legal acts and local legal acts regulating the protection of confidential information;


__________________

(Employee Signature)


EMPLOYEE IDENTIFICATION

WITH THE MODE OF COMMERCIAL SECRET OF COMPANY LLC AND THE LIST OF INFORMATION FOR THE COMMERCIAL SECRET OF COMPANY LLC

I agree to gain access to trade secret information.

I have read the Regulation on the commercial secret of the limited liability company “Company”, the regime of commercial secrets, the List of information constituting a commercial secret, the Order on establishing a regime of commercial secret in LLC “Company”.

I have been warned (a) that in case of violation of the trade secret regime, I can be brought (a) to the following types of liability:

criminal liability in the form of a fine of up to 1,000,000 (One million) rubles or imprisonment for a term of up to three years (Article 183 of the Criminal Code of the Russian Federation)

disciplinary liability in the form of dismissal (paragraphs “c”, clause 6 of article 81 of the Labor Code of the Russian Federation)

full liability in the form of full compensation for the damage caused (clause 7 of article 243 of the Labor Code of the Russian Federation)

civil law liability in the form of compensation for losses (Article 15, Article 1472 of the Civil Code of the Russian Federation)



__________________________

(Employee Signature)

Trade Secrets Non-disclosure Agreement