"State of the art" and trade secret - a contradiction?

If information is part of the "state of the art", it does not qualify as a trade secret at first glance. On closer examination, however, the matter is more differentiated. The Austrian Supreme Court discussed this question in case 4 Ob 188/20 f in connection with construction drawings for machines.

For practice, the following "take-aways" result from this ruling

• Information is not only secret if it is absolutely new; rather, the practical accessibility of the information to a certain group of people is decisive under the provision of § 26b of the Austrian Act against unfair competition, implementing Art 2 para 1 Directive (EU) 2016/943.

• Information is generally known if it is part of the common knowledge and understanding of the public at large or of an average person belonging to the relevant professional circle. Publications in relevant journals or in disclosed patent applications generally lead to the information being considered to be common knowledge.

• It is questionable whether information belonging to the "state of the art" is generally known or easily accessible. A few years ago, in the ruling 4 Ob 12/11 k, the Supreme Court still held that belonging to the "state of the art" generally speaks against the existence of a trade secret. In the case 4 Ob 188/20 f, however, the Supreme Court has now differentiated as follows. First, the Supreme Court stated that the term "state of the art" is not subject to a uniform interpretation. If information belongs to the state of the art, it is known to the relevant expert circles and thus generally. However, this does not exclude that the necessary information, in the sense of instructions or plans, may be secret if the skilled person can only develop it with considerable effort (cf. BGH I ZR 118/16 - Hohlfasermembranpinnanlage II). According to this decision, the question whether a certain piece of information belongs to the state of the art does not play a role for the secret character as long as it can only be found, accessed and thus made usable to the entrepreneur with great time or cost effort. Design plans in which dimensions and arrangements of technical components of a machine are embodied and the production of which requires considerable effort may therefore be protected as trade secrets.

• In case 4 Ob 188/20f the Austrian Supreme Court dealt with machines and vehicles for the construction and maintenance of railway tracks, specifically with a pick arm, a pivot bearing and a pick holder, the basic shapes of which, according to the findings of the lower courts, belonged to the state of the art, especially as these were evident from the publication of corresponding expired patents. However, additional information resulted from the construction drawings; not all details of the plans were accessible to the "average skilled person" in the relevant field of mechanical engineering from public sources. Based on this, the Austrian Supreme Court concluded that the details of the plans were secret information.

• Even though the Supreme Court dismissed the case because it came to the conclusion that the use of the specific plans by the defendant would not have impaired the commercial interests of the plaintiff, the case clearly shows that the objection of (lawful alternative behaviour) under the pleas of "state of the art" per se does not mean that trade secret protection would also cease to apply.

Martin Prohaska-Marchried and Wolfgang Kapek regularly represent companies in Austria in the enforcement and defence of trade secret protection claims and are authors of the handbook "Know-How-Schutz kompakt" published by Austrian Standards.