How can I use confidential know-how as evidence in a dispute without making it public?

In an IP dispute, you may need to disclose confidential know-how so that your claim or defence can be examined. WIPO warns that inadequate protection against public disclosure during proceedings can reduce or destroy the commercial value of that know-how. See its guidance on protecting trade secrets.

This is a risk of losing trade-secret protection through disclosure. It does not mean that every confidential disclosure destroys protection. The practical question is who needs to examine the information, for what purpose and under which safeguards. The available measures depend on the jurisdiction and type of proceedings.

Identify the confidential detail needed to address the dispute

Separate the fact you need to establish from the documents containing the evidence. You might need to show which formula was disclosed to a manufacturer, how a particular process operated, or whether your earlier work contains the features now in dispute. Each question may require different information.

Mark the sensitive passages, tables, code or drawings and explain why public disclosure would matter. Avoid treating an entire project archive as equally confidential when only particular information needs protection. For help defining it, see how to identify the work or know-how at issue in an IP dispute.

For example, imagine that a manufacturer needs to establish which process parameters it supplied to a former partner. The relevant process sheet may contain both the disputed settings and unrelated production know-how. Identify the parts needed for the comparison and ask your adviser how the remaining information should be handled. The selection must still leave enough context for a fair examination.

Arrange safeguards before submitting the material

Discuss confidentiality before attaching sensitive files to correspondence, filing them with a court or giving them to an expert. A document marked “confidential” does not by itself determine who may see a court file or what may be discussed in a hearing.

WIPO’s guide to confidentiality during litigation describes measures such as protective orders and restricting access to named individuals. The applicable procedure determines how protection is requested and granted. Ask your lawyer what must be in place before disclosure and how to submit the confidential material while that request is being considered.

In EU trade-secret proceedings, Article 9 of the Trade Secrets Directive provides for restrictions on access to documents and hearings and for non-confidential versions of judgments. Protection can concern alleged trade secrets while their status is being decided. National procedures implement these safeguards; an NDA or a private sharing arrangement does not replace the necessary procedural steps.

Confidential know-how can also be relevant in other kinds of dispute. For proceedings before the Unified Patent Court, Article 58 of the UPC Agreement provides for restrictions on collection, use or access to evidence to protect confidential information. This is an example for that court, rather than a rule for every patent dispute.

Distinguish protection from the public from access by the other party

Keeping information out of the public record does not necessarily mean withholding it from your opponent. The other party needs a fair opportunity to understand and challenge the evidence. WIPO identifies this balance as a central issue in protecting secrets during litigation.

For EU proceedings covered by Article 9, a restricted group accessing documents or hearings must include at least one natural person from each party and their respective lawyers or representatives. Do not assume that access can always be limited to external lawyers or an independent expert.

Ask your adviser to define who may receive the material, what they may do with it, whether copies may be made and how reports or questions containing confidential detail will be handled. An expert report may help explain technical evidence, but it should not be treated as an automatic substitute for access that the proceedings require.

Keep confidential originals and disclosure copies connected

Preserve the complete original separately from any redacted or abbreviated version. Give each version a clear reference and record what was removed. Check that redaction does not leave sensitive text, comments, formulas or attachments accessible in the disclosure copy.

In the process-sheet example, an authorised reviewer might examine the complete parameter table while a public exhibit uses an approved redacted version. Both should identify the same underlying document. A reviewer should be able to explain which version they examined without inadvertently repeating the confidential values in a public report.

Where timestamped records are used, retain the exact files and proofs for the relevant versions. Redacting a file changes it, so keep the relationship between the original and the redacted copy explicit. A technical check can take place within the agreed confidential review process. Read more about what independent verification involves.

Follow protection through the rest of the proceedings

Track the material disclosed, recipients, applicable restrictions and subsequent exchanges. Include extracts reproduced in expert reports, witness statements, presentations and hearing materials. A confidential exhibit can reveal its contents through a later document if the same care is not carried through.

Review proposed public versions with your adviser and continue following the applicable restrictions after the dispute ends. Under Article 9, confidentiality obligations can continue after proceedings, subject to specified exceptions. Agree how retained copies, ongoing access and any return or deletion requirements interact with preservation obligations.