Technology- & IT-Law

Protection of secrets in Germany: ban on reverse engineering must be clearly formulated and agreed upon

The case of the Regional Court of Cologne, 33 O 39/20, concerned the acquisition of trade secrets through reverse engineering in the biological field (the acquisition of antibodies was at issue). The decision illustrates the – repeatedly underestimated – importance not only of well-worded contracts, but also of the actual conclusion of the contract. This decision in particular makes it clear that companies should pay very close attention to ensuring that their services, which are actually protected as trade secrets, do not unintentionally become fair game – it is finally time to wake up and stop treating the issue of trade secrets stepmotherly!

The Regional Court assumed that Section 3 (1) no. 2 GeschGehG expressly covers reverse engineering. It could not be established that the defendant was prohibited from reverse engineering in deviation from this by corresponding agreements. The requirements of Sec. 3 (1) No. 2 GeschGehG are not too complex; the essential point of examination should always be whether there was lawful possession of the acquired objects/software (in this case: antibodies) and whether restrictions were imposed (Sec. 3 I No. 2 lit. b) GeschGehG). In this case, it is true that restrictions may be imposed on the lawful owner with regard to the handling of the product or object provided to him. As a rule, these will be contractual agreements expressly made by the parties. However, it was only flatly argued that reverse engineering had been excluded by general terms and conditions. In this respect, the court expressly criticized that it had not been sufficiently substantiated that the general terms and conditions had been included in the contracts.

In the view of the Regional Court, however, such a contractual restriction would have been necessary from June 2018 at the latest, as the implementation deadline for Directive (EU) 2016/943 had expired on June 9, 2018, so that Section 17 UWG a.F. was to be interpreted in conformity with the Directive from this point in time until the GeschGehG came into force, inter alia, to the effect that obtaining a trade secret by reverse engineering was permissible. This opinion is quite remarkable; in many business relationships, it will take its revenge that the legislator has slept through this topic for far too long (and that too many companies have not taken this important topic seriously until today).

The Regional Court was able to clarify that a possible notice to the purchaser with the text “For Research Use Only” is not sufficient to assume an effective contractual restriction. This is because blanket and unqualified confidentiality clauses are not sufficient in this respect. Rather, the contractual agreement must make it clear that it is precisely intended to prevent the acquisition of information through reverse engineering.

German Lawyer at Law Firm Ferner Alsdorf
I am a specialist lawyer for criminal law + specialist lawyer for IT law and dedicate myself professionally entirely to criminal defence and IT law, especially software law. Before becoming a lawyer, I was a software developer. I am an author in a renowned commentary on the German Code of Criminal Procedure (StPO) as well as in professional journals.

Our law firm specialises in criminal defence, white-collar crime and IT law / technology law. Note our activity in digital evidence in IT security and software law.
German Lawyer Jens Ferner (Criminal Defense & IT-Law)