Lifecycle of a Smart Idea | Ready or not, here we come: Tips for catching trade secret thieves

Gordon Harris: Good day to all of you wherever you may be in the world my name is Gordon Harris from the Gowling WLG International IP Leadership team and I am pleased to welcome you to the fifth webinar in our series the Lifecycle of a Smart Idea.

Today the series takes a somewhat different turn. Up to now we have been largely focusing on the law which is familiar to many of us that surrounding the grounds for seeking patents and the principles behind the protection of trade secrets.

Now we are starting to move into the realms of the highly practical we return to the world of trade secrets today to ask the questions which arise in the immediate aftermath of the theft of valuable trade secrets. This can happen anywhere in the work at any time and we will reflect that as we move from country to country in pursuit of our thief.

We will follow a story based on events which are all too common if slightly exaggerated for effect and emphasis. Of course not all the steps which might be taken to catch our thief fall within the comfort zone of the average intellectual property lawyer. The pursuit of someone intent of stealing your valuable secrets calls for agility, fast and lateral thinking and a willingness to try pretty much anything lawful to get the desired result.

Stand by for some very different ideas to those which you usually encounter on a day to day basis.

The scenario allows us to explore different courses of actions and how you can mobilise civil procedures, government enforcement agencies and criminal enforcement authorities where possible. The causes of action will relate to trade secrets laws, copyright, theft of physical property, unauthorised access of computers and more.

The preliminary and emergency measures will differ across jurisdictions. So as we work our way around the world we will encounter the member of our team who are standing by in different countries to give you the practical advice and strategic tips needed to assist the process of tracking our thief and recovering our secrets.

Before we start then let me introduce you to our panel for today.

First of all we have Ivy Liang in China. Ivy very recently joined us in our Guangzhou office. In her former role as presiding Judge in the Guangzhou Provincial Court she served as the Deputy Director of its IP division. Ivy has extensive experience on IP protection in China and has handled many cases including many high profile ones. Her judicial case analysis regarding trade secrets was accepted by the Supreme People's Court in 2017.

Next will be Scott Foster. Scott is the Leader of the IP Litigation Group in the Vancouver office. He has 16 years' experience of IP litigation in England and Canada and has advised on real life cases that have facts similar to the facts of this webinar.

Next we have Glen Jennings. Glen is a Partner in our Toronto office and leader of the firm's white collar defence and investigations group. He started his career as a Crown Prosecutor for the Ministry of the attorney General. Glen and his multi-juridical and his multi-disciplinary team offer a range of specialised services to clients including crisis management, internal investigations, corporate risk and compliance programmes, due diligence and white collar defence.

Next up will be Huw Evans in London. He was a partner of almost 30 years' experience. Yes he really is that old. Helping clients to protect their IP assets and manage risk in complex disputes involving particular patents and trade secrets. Much of his work is international and across jurisdictions.

We then will move onto Paris where Philippe Rousseau is waiting. Philippe is a partner in our Paris office and experienced in all aspects of commercial litigation and contract negotiation determining established commercial relations. He provides full service dispute resolution advice and solutions assisting companies in all matters and representing them before local courts as well as in international arbitration procedures.

Then we go to the Middle East where Jon Parker will be. Jon is the head of our Middle East and North Africa and IP practice and is based in the UAE. His practice covers contentious and non-contentious IP matters including matters before the UAE courts and courts elsewhere in the region. In recent months there have been successful actions before the UAE Federal Courts and indeed the Dubai courts for clients as well as a preliminary injunction and civil and criminal actions before the Egyptian Courts. Trade secrets are one of the less frequently enforced rights in the UAE and then only usually involving individuals moving between companies within the Country.

Finally we will go to Moscow where Alexander Christophoroff is waiting for us. Alexander has been a partner in our Moscow office for almost ten years. His practice is litigation and appeals on the entire IP spectrum as well as unfair competition cases. His numerous Court cases set many precedents including the highest Courts of Russia, Supreme Court and the form of Supreme Commercial Court. In the last century he says he was the general Counsel of the Russian Patent office.

Now as we go along please feel free to post any questions in the Q&A box. We hope to have time to deal with some questions at the end, but if not we will answer them in a follow up note.

Gordon Harris: Our story has its roots in Canada and in particular in Vancouver, the corporate base of a multi-national company called Optimus Plastics. Optimus has developed a manufacturing process for a new bio-degradable plastic that decomposes over a very short period of time is the next big thing in the fight against plastic and packaging.

Some of the research and development took place in Vancouver and the rest of the companies US laboratories in small town close to Seattle. The new plastic is made up of known reagents but in a very particular ratio added in a specific order and an addition undergoes very precise hearing and cooling processes that is the recipe.

The recipe is a closely guarded secret. There are patents but none of these really cover the know-how for the manufacturing process and the recipe itself. It was decided by the company that it would be better to rely upon confidential knowhow than to patent the recipe. The know-how and recipe are known only to a selected few trusted individuals.

One of these is Dr Ethel Lien who is a chemical process engineer. She has dual Canadian and US nationality and although she now lives in China, she has family in Canada and the USA and a flat near the US premises of Optimus near Seattle.

The manufacturer of this special plastic is carried out in one of the company's factories in China. Doctor Lien runs the manufacturing side of that Factory. Unbeknown to Optimus, Ethel has - for months now - been in talks with their key competitor - Megatron Packaging; a Russian owned company with manufacturing sites and offices in both Russia and across the Middle East.

The market for the special plastic is huge and worth billions of dollars in revenue. Ethel has been offered a life-changing amount of money to move across to Megatron and head-up its manufacturing operations in Russia and the Middle East.

Now because of the huge value of the know-how and the recipe, Optimus has strong proper privacy policy and takes many measures to prevent its secrets being leaked. Importantly, as we have said, only a very few select people have access to the secrets and on a need-to-know basis only. Ethel is one of these people. Even in respect of these trusted employees, security measures are put in place.

The recipe and some of them know-how for the process itself is recorded in a processed document of which there are a very limited number of hard copies and these them may not be removed from the office, in which the particular employee has their desk.

The recipe is also in areas of the hard drive of Optimus' server, of which only a very limited access is given. Employees are banned from removing paper documents from their offices, and from bringing electronic storage devices into the company premises, and they're also not permitted to remove any such devices.

Much know-how is in the relevant employees heads.

So the actual narrative of our storage day begins in China. The Head of Security at Optimus factory in China, an ex-American policeman called Dale Cooper, is out one evening having dinner at a local restaurant when he sees Ethel having dinner with a couple of individuals who are quite formally dressed.

This seems a little odd to Dale given the informality of the surroundings, but he tries to put it out of his mind. However there is something vaguely familiar about the individuals that makes him feel uneasy. He cannot quite think why. Two weeks later, and after staring at CCTV screens for too long, he idly picks up a copy of Plastics Weekly and on the front page there is a picture of the founders of Megatron packaging.

He immediately realises these were the people who he had spotted with Ethel. Aghast now he is furious with himself for not realising before.

Immediately he calls Ethel. The call is answered, but by another junior engineer in her team. She tells Dale that Ethel has called in sick, which is unusual as Ethel has never taken a day off before.

Dale decides to check up on Ethel, so he starts looking at CCTV footage from the day before and he sees Ethel placing a thumb drive into the company's mainframe and then removing it and putting it into her pocket.

He also sees her placing a collection of papers inside her coat and then leaving the room, taking her laptop with her as well.

Further investigation shows she had been preceded to leave the building and it is discovered her copy of the process manual is missing.

It is all too clear what has happened. Ethel has left the company's premises in China and in all probability has taken very valuable secrets with her, including in all likelihood, the secret recipe for the new format plastic.

Now what? What can the authorities in China do to help?

Let us go first to Ivy in Guangzhou. Ivy, what are the first things we should be doing in China?

Ivy Liang: In China, I am thinking about two possible emergency actions. The criminal one, which may be more straightforward and quick and as well, as the civil one which may need more time for evidence collection.

Considering the urgent situation now, the first thing first is to hold back Ethel in information she took away. We then need to find out where she is now and make sure she stays in our jurisdiction.

Also our clients will need to be advised on is options in China, as well as what might happen if Ethel leaves China. For example, does she head back to Canada where she has family there, the client may need to be ready to take action there in Canada.

Of course as being part of the international law firm, we have the privilege here to the age with our colleagues all around the world. For example, I will speak to my colleagues in Canada who are working closely with the clients. They are Scott and Glen who you will hear from later, and we may then arrange a joint meeting with the client in Canada and provide the all-around service.

How do you think about this – Scott.

Scott Foster: Yes thank you Ivy. I completely agree. We can prepare a joint strategy that involves both Canada should she [unclear 11:54] and China, work closely with the client to build a global strategy, so I agree entirely Ivy, thank you.

Ivy: Yes. Also the Canadian client will want the advice on the advantages and disadvantages of proceedings in China and what obligations does it have. For example – cost, witness participation, translation obligations, attendance and hearings etc.

The client will also want to know what the risks are afforded in making a criminal complaint in China.

Do you think you probably happen Glen?

Glen Jennings: Yes. This is becoming a much more typical scenario for us, where clients have to balance -because of their international businesses - options of pursuing charges in one country or another depending on where the activity happens, where the jurisdictions may be taken, and what may be the most advantageous path for the client.

Ivy: Okay I see. So firstly let us see what we can do with the criminal enforcement here in China.

I feel that the first step is to report to the police of course. The best choice under this circumstance is to introduce the public power to step-in and detain Ethel and the company's property. This plan may have two limbs. Plan A is to report to the police and assert that Ethel may constitute a crime of theft.

This may be the easiest and most obvious way to provide the preliminary evidence to the police. At this stage we need to submit the CCTV footage. The ownership and value of the company laptop and thumb drive to the police. In China any cases of theft reported to the police shall be accepted, registered and investigated, regardless of the value of the properties to be stolen.

In the case of theft, but not just serious enough to constitute a crime of theft. The suspect shall be detained for five to fifteen days. Let us say we can resort to the police first and detain Ethel for at least five days or more . Then it will give us more leeway for that.

On the other hand, if the value of chattels worth more than 1000 RMB. For example, the laptop we are talking about. Ethel there shall be arrested for longer period, ranging from seven to thirty seven days for further investigations.

As the police will investigate on any stolen properties, we can then be aid with the police to search for the laptop, the thumb drive, manual, documents etc. which were taken away by Ethel, as shown in the footage.

Well now, once we have Ethel detained or arrested, here comes the Plan B.

Plan B is to report to the police that they should [unclear 15:04] to Plan A. We can then assert that Ethel may constitute a crime of trade secret infringements at the same time.

When investigating a criminal case, the public security office has the authority to seize all evidence related to the case, and such evidence can also be used in administrative remedies and civil proceedings.

Moreover the police may find out more interesting evidence about the relations and transactions between Ethel and Megatron through investigation.

This evidence would be of great importance in the possible disputes or litigations between Optimus Totaline and Megatron in China or even other jurisdictions I believe.

So generally speaking, criminal proceedings are very effective in trade secret infringement cases. It is worth pointing out that only when there is material losses through the public security organs in China intervene in prosecuting violators for their criminal liability.

Therefore if Optimus intends to deal with trade secret infringement through criminal proceedings, it is advised that the losses suffered by this should be highlighted to the extent possible, so as to enhance the possibility of pursuing criminal law policy against the infringers. Naming Totaline as well as Megatron.

Well now as I mentioned earlier, the client might also want the advice on criminal options in Canada, so I am not going to hand it over to Glen. Glen what is your opinion about this.

Glen: One of the important considerations for the client, when they pursue criminal charges, is going to be the possibility of extradition If you are talking about someone who has multiple homes around the world and has the possibility of slipping away from their grasp, they may ultimately have to rely on extradition to get her to the country that chooses to prosecute, and Canada is going to probably have a benefit there in comparison to China, particularly if she is a European or a European country or in the United States, where we have treaties and a regular stream of extradition matters going back and forth.

Another consideration is going to be the concept of double jeopardy. If China chooses to pursue charges, or if the client chooses to pursue charges in China, Canada will not consider laying charges because of the risk of the defendant pleading double jeopardy.

But it is clear that Canada would be an option for criminal charges in the circumstances. We certainly would have jurisdiction because of the location of the company and because there is - it passes the test of a substantial connection to Canada.

In terms of specific charges, it is of note that Canada is about to criminalise theft of a trade secret, which is as a result of the new Canada/US-Mexico free trade agreement, but that has not happened yet so it is not a current option.

There are some challenges in Canada in terms of prosecuting a theft of trade secret. Our Supreme Court has ruled that there must be a proprietary right at stake that must be capable of being taken or converted to deprive the owner of that right, and according to this Supreme Court decision in Canada, confidential information does not deprive the owner of any property, only of the confidentiality of the information.

And they stated in that case that information per se cannot be a subject of a taking, but I think there are definitely other options - that we would want to look at the computer and data related offences. In Canada unauthorised use of a computer and deleting or modifying that information, that confidential information is criminal.

In fact a recent case of some profile here in my home province of Ontario involved in aide to the former Ontario Premier who was convicted of unauthorised use of a computer, an attempt to commit mischief to data for his role in irretrievably deleting politically embarrassing records from Ontario Government computers. So that is an option here.

There is also a fairly well-used charge of secret Commissions here in Canada. It is typically used where perhaps a sales agent, or someone in that role gets money from a competitor in order to get information or to get sales taken away from a company, so it is not a perfect fit but it might be an interesting fit that you might get the police to pursue.

And finally, fraud is always an option. Fraud is one of those very broadly defined criminal offences and one of the main markers is deception or dishonesty and I think that is clear that it exists here and the question is can we get the police to understand the tie-in to the second part of the test, which is about a risk of deprivation.

So I think there would be a number of options of pursuing this theft of trade secret here in Canada and possibly having charges laid here to pursue that.

Let me turn it back to you Ivy to talk about other options including civil - pursuit of civil claims.

Ivy: Thank you Glen for this/your input. I am going to continue with the civil proceedings in China to deter Ethel from leaving.

When Ethel has been detained, even from a short time - here comes the second step - namely the civil litigation. The civil proceeding can be commenced in parallel with the criminal action. It is particularly noteworthy that in civil proceedings we are entitled to apply for injunctions, especially the temporary injunction at the moment.

According to the article 100 of the Civil Procedure Law in China, we can apply for temporary injunctions for prohibiting Ethel from using a trade secret. You can even move further, to apply for handing over of the thumb drive, the manual, the documents, the laptop which are currently possessed by Ethel.

If Ethel refused to do so, then she may constitute a crime of refusing to perform judgments or court orders, and then can be arrested and prosecuted.

We can also apply for the court order to prohibit her from leaving the country temporary, as the former Judge I must say that it is not rare at all for a Chinese Court to issue the this type of restriction order, especially when the respondent has the foreign nationality and she plan to going abroad to escape from the litigation or performing statutory obligations.

Gordon: Well unfortunately, despite the best efforts of Chinese authorities, Ethel has got away, but we know where she is going. Ivy, how do we know where she is going?

Ivy: First, if the warrant of arrests has been approved by the prosecution office in China, this warrant must be executed by the police. We can then try to liaise with the police and get to know about Ethel's whereabouts from the immigration to the police.

And second, if we successfully get the temporary injunctions from the courts, according to the article 255 of the Civil Procedure Law here, the People's Court may issue a restriction order to prohibit the respondent from leaving the country.

Therefore we may first try to liaise with the courts and restrict Ethel from leaving the country through the court orders.

Before doing that, the Courts firstly need to get information from the border, to know about where she is, then we can then make a detour and find out Ethel's whereabouts from the Court.

Gordon: So from these sources, we learned that Ethel has gone on a flight to Canada. Now we know she is headed for her home in Vancouver, presumably to collect some of her personal assets to take for her new life, with her new employers.

Scott, what have you got to do to be ready for her when she arrives in Vancouver?

Scott: Yes thank you Gordon. So with a bit of luck we know she has boarded a flight in China and we have got 12 to 15 hours until she arrives in Vancouver, so we have got time to start making our preparation.

A bit like what Ivy said, we would go down the civil route and it seems to follow the same general process. Start an action and you try to seek an order from the court forcing Ethel to do certain things.

What we would do is, we would start a legal action against Ethel and at the same time we would file an application for an injunction and a seizure order.

As, in most court jurisdictions, you would need to support your application with evidence, so we would need to liaise with employees and Optimus in China and probably in Canada, to build-up an affidavit to prove that the information was confidential, it is highly valuable and it has been stolen by Ethel.

For example, the CCTV footage could be placed as an exhibit to the affidavits. We would work that all up while Ethel is on the plane enjoying her cocktails.

The basis of our action would include breach of confidence, breach of copyright, unjust enrichment, conversion and other civil torts that we would want to rely upon. We would essentially try to throw the kitchen sink at Ethel to show the court here that she has done a lot of bad things.

We would probably also want to plead some criminal code violations, such as the mischief in relation to data that Glen mentioned earlier. However, they are not civil causes of action and we cannot enforce that, but the purpose of that is to give the pleadings and the application materials some heft and some weight to prove that really Ethel has done is a serious offense.

We would prepare all of those and then we would consider which court, and I think we would go to the British Columbia Supreme Court in this instance.

Gordon: Why did you say that Scott? Why would you go there as opposed to a national court?

Scott: That is a good question Gordon. In Canada we have two court forums. One is the federal court that applies right across Canada, and the other are the provincial courts that are in each province.

The federal court, due to our constitution does not have jurisdiction over breach of confidence cases. It does have jurisdiction over breach of copyright, and by making copies of user manuals and so on Ethel has infringed copyright. But the more primary action here, the one that has the real teeth, would be I think would be a breach of confidence case. So as the Federal Court of Canada does not have jurisdiction over breach of confidence cases, we would not [unclear 26:54] federal court.

There is also a generally understood higher threshold in the federal court to get a preliminary injunction or an equivalent of a TRO as the federal court applies a higher threshold to get that approved.

So, the British Columbia Supreme Court would definitely be the best choice here, particularly as she is flying into Vancouver which is in British Columbia.

We have decided it is the British Columbia Supreme Court and we now need to get into the court. Because of COVID-19, the court operations have slowed down somewhat, but they are picking up again quite rapidly now. However even during Covid, the court was hearing urgent matters on an ex-parte basis, and all you have to do is schedule a call – sorry, call the scheduling and arrange a court time for real urgent matters.

So nothing due to Covid would have stopped us or would stop us now getting before the court on an urgent basis.

Indeed the British Columbia Supreme Court has a duty Judge that will hear cases and applications on weekends and after hours. So again, with 12 hours' notice we can be in court, the next day or that day before a Judge.

We go out to court. The hearing would probably take one to two hours and if the Judge agrees with us we would get an issue - an order issued immediately after the hearing. The relief we will be seeking is a little similar to what Ivy was describing, which is we would want a mandatory injunction forcing Ethel to hand over the laptop, the papers and her a thumb drive to us, because they are repositories of confidential information, and we would also ask what a search and seizure order, which would allow us to inspect her bag, her suitcases and seize the evidence that we want to use later.

That is exactly what a search and seizure order is. It is to seize evidence. It is not a warrant that gives us to go and explore what she is doing, it is to get that evidence out of her hand because there is a real risk that she might destroy it, was she given notice.

It has the practical effect that we want, which is that the evidence moves from her to us and we are therefore in control of it and we can deal with her breaches later, at a more slow pace through civil court system.

Now, if she handed over the laptop, the papers and the thumb drive, 20 years ago that was probably sufficient to make sure she no longer had anything in her possession. These days with the cloud and internet based services, she may have stored information remotely - such as in the cloud. And in the order we could get from the court, would also require Ethel to hand over passwords and login information for her various accounts, so that we could take over control of those.

Using a search and seizure order, we would likely be able to get the information out of her hands, which is one of our number one goals.

We get the order or the orders, and we head up to the airport to meet Dr. Lien.

We would we would need quite a large team to come with us. We would need several lawyers. We would need an independent supervising solicitor appointed by the court to make sure that we apply the order in a correct manner.

We would also probably want to have a private investigator attend with us to just manage the process and also to provide an independent witness statement later should we need it.

We would also want to have a member of the police force turn up and with us. In Canada there is the Royal Canadian Mounted Police and there is also municipal police, and in the several cases that I have done involving search and seizure orders and injunctions, they are quite prepared to attend at the service of the order, to make sure that the peace is kept.

They are there to just make sure that if anything happens, say Dr. Lien gets angry or aggressive or something like that, they are there to make sure that that does not happen.

We would turn up looking…Yes Gordon?

Gordon: Well I was going to say, given my excitement at encountering members of the Royal Mounted Canadian Police, which should be fantastic in its own right. What do you do if she just walks straight past you?

Scott: Yes, a very good point. We are in the civil realm, Gordon, so we cannot force her to give these things to us. We serve the order on her and she has to comply, and the independent supervising solicitor will tell her that she has to comply or she is in contempt, but we cannot force her to open her bags and we cannot force her to hand anything over to us. And actually, even the police officer there will not do anything.

In one case I did several years ago, the defendant refused to allow us to enter his premises, even though we had a search order and the member of the police with us was very clear that he or she was not able to effect this warrant. This is a civil warrant.

Really, we are relying upon her to feel pretty pressured and to hand over the information. I do think the attendance of a police officer does give it more gravity and so she might now think well, this is something that I really need to start taking seriously. But if she does not, there is nothing we can do at the airport at that time.

We therefore have to - if she does not comply, we therefore have to get back into court and get a contempt order issued.

What we would do is, as we were heading up to the airport, we would have one of our colleagues back in Vancouver preparing the necessary materials to file an application for contempt.

I would then call that colleague and say Ethel has just ignored our orders and walked off. She is now at the hotel in the airport. Please go to court and get an order.

My colleague would run up to the court and show another Judge or maybe the same Judge that an order was issued this morning, she is not complying with it and we want arrest warrant issued.

The court, in those situations, is quite quick to issue arrest warrants because it thinks that or believes that it - compliance with his orders is incredibly important. So typically we do get an arrest warrant issued, which is great and the client may start to think brilliant we are on a good start here.

However practically speaking, an arrest warrant comes from the court, not from - it is not an arrest warrant issued by the police. The arrest warrant from the court is going to be executed by the Sheriffs of the court. And the Sheriffs are those men and women of law enforcement who work at the court to protect the court security and to bring prisoners to and from jail.

They are not the regular police force and they do not have the facilities or the resources to go and chase down criminals at any given time. Generally speaking it will take them several days to get everything ready to go and find Dr. Lien. However I am suspecting that probably being a canny criminal that she is she, is probably on her way to the border already, and we will therefore not have those Sheriffs meet her and time before she crosses the border.

So Gordon that is where I think we would get to in Canada.

Gordon: Thank you very much indeed Scott and sure enough, she is one step ahead of her pursuers. So she has collected her US passport from her flat in Vancouver. Taken a fast car and is driving towards the border with Washington State, USA, heading for her family home, close to the company's US research site in the disused sawmills of Snoqualmie, near to Seattle, presumably to collect her more belongings and say goodbye to family members, as she knows she may not be able to come back for a while. As it turns out, 25 years.

Glenn, what might we be able to do in the USA?

Glen: I think, because of our long history of trade and many of our clients having businesses both in Canada and the US, there is a lot of opportunity here.

I just want to take one second to go back to Canada for a moment, because it ties into what we are going to be doing in the US.

We would, at the same time as Scott is working on the civil pursuit, we would be also working on the criminal pursuit - and there is there is nothing wrong with chasing her down on both tracks at the same time.

We would have been attempting to do that and hopefully we have convinced the Canadian authority to issue a an arrest warrant for one of the criminal offences I talked about earlier.

Assuming we have that in hand, one of the first things we are going to try to do is get an Interpol Red Notice Issue, because she is a fugitive, she skipped two countries now, we are entitled to get that information before Interpol, which is the International Criminal Police organisation and that would alert police worldwide about her as an international fugitive.

Timing is going to be an issue, because checks are done by Interpol before a red notice gets issued. Something known as the Interpol General Secretariat has a specialised task force that must review every red notice request to ensure compliance with their requirements, so you do not know how quickly we are going to be able to get it, but we are going to make sure everything's organised.

They have all the information they need and that will help pursue her in the United States. The main thing we are going to be looking at in terms of co-operation with the US is extradition. I am not going to get into all the details of the requirements, but suffice it to say that the extradition treaty between Canada and US is well-used. I suspect it is on a virtual daily basis that either Canada or the US are looking to return fugitives to the other country because we have such a large and porous border.

That is something that we can get moving quickly, again we will have all of all the materials ready, but we have to provide it to the appropriate authorities and the Canadian government. Who have to approve it, they have to then send it to the United States and the Secretary of State provides it to their appropriate authority and they will take action if appropriate.

The one thing that is beneficial, is you can get a provisional arrest warrant before the actual arrest warrant is issued. It will give them a chance to detain her and hold her until the paperwork is complete and the arrest warrant is issued in the United States.

That is the types of things we would try to do quickly.

There are also a number of other tools that we could use if there is ultimately co-operation on gathering evidence. The most often used is what is called the MLAT process - Mutual Legal Assistance Treaty that would be very helpful in these circumstances.

The last thing I want to say, is that the one thing we would keep doing as we pursue our Ethel, is looking for other offences she may commit.

For example, maybe she is money laundering as she moves around from country to country. Maybe as she goes into the United States, she has too much currency because she is found all this new money recently and we are going to use our connections, we are going to use our investigators and we are going to try to tip off the authorities to keep a close eye on her, because if we can now get her on another offence issues she has committed in the United States, they will happily pursue her for us and we can stop her in her tracks.

Let me turn it back to you Gordon.

Gordon: Thank you very much indeed Glen. Some really interesting stuff there.

Well, her network is working and this time she got to the border ahead of us and she was warned off.

She did not go to the family home and instead she made her way straight from the border to Seattle International Airport, and boarded a flight to London. Is she going to stay in London or move on?

We know she is got some family connections in Egham, a quiet suburb near Heathrow but will she just connect to another flight? And if so, can we reach her in the airport first?

Huw, what are we going to do in London?

Huw Evans: Thank you Gordon. Well, I do not have too much time really do I, so I have about seven hours while she is in the air and hopefully she is going to come through arrivals at Heathrow at some point.

Now, it was very good to hear from Scott as to what he can do in Canada, and perhaps not surprisingly it is also interesting to know that the Canadian UK legal systems are pretty much identical in a way which they would deal with the matter on the civil or the civil process.

So effectively I can re-use much of the material that Scott has already prepared, and I can deploy that in the in the English Court.

That is going to save me a lot of time. Like Scott when I do that, I am probably going to deploy here this kitchen sink approach, but I will focus on some other causes of actions as well, particularly copyright infringement, because that is probably quite easy for me to prove an infringing act in the UK.

I would also bring to the court's attention all the Ethel's behaviour to date and it is now been enhanced because not only did she pass through Canada, she has also now passed through the US as well.

But I know from what I heard already, that Ethel is really aware of her rights and other and so forth. She has already slipped the net a couple times, and so I know that she is probably going to run away from the service of any search and seizure order.

And even with the police officer present in execution, she knows full well that the police officer cannot actually execute the search of her luggage, and the so whilst experience does show that the presence of a police officer can have a sobering effect on the perpetrator, we know it did not work in Canada and so I am going to have to come up with a different plan as well.

That is not to say we would not go for the search and seizure order. We would still do that, but I need to have some kind of Plan B. Whilst I have the team in place, in getting the search and seizure order from the from the English Court, at the same time I will have another team in place meeting with the police at Heathrow. As a port of entry to the UK, Heathrow is probably the one with the most police officers, and so our chances of grabbing the attention and interest of officers is probably pretty good there.

We would explain that we are seeking at executing a search and seizure order at arrivals and of course, with airports being such sensitive places, we are not going to have too much trouble in convincing the police that officers should be present when that order is executed, for the same reasons that Scott really mentioned.

But this is where Plan B comes in as well. So whilst we are explain to the police, that we want their assistance with the search and seizure order, we are going to also explain to them that there is going to be a crime committed on UK soil, as soon as Ethel passes through customs and into the UK.

That crime is handling stolen goods, which is an offence under our theft act. And in line with much of UK criminal law, there is often an extraterritorial reach to some extent, and under the theft act, for something to be stolen, really the theft does not have to have taken place in the UK- and neither by a UK citizen.

And so once we can show them that the goods are stolen and she has got them, then she is going to be committing an offence. But to convince the police that is happening, we are going to need much more evidence than what was covered up in the evidence of our search and seizure order.

I would be really interested to hear from Ivy and use the evidence that she got from the CCTV recordings, plus evidence as to ownership of the laptop and other items, and how we will actually be a to identify the laptop and other items so we can actually prove that this is not her property.

To explain the seriousness of everything, we no doubt, are going to explain to the police about the value of the trade secrets, and indeed in trying to grab their attention, they are probably going to be naturally interested in this because this is not part of their normal day to day job.

We are also going to have to provide the police with a pretty good description of Ethel so that they can make identification of her, because we are assuming that she is not going to respond to a tannoy request asking her to go to customer services where she might be recognised by a police officer.

In getting the police involved we do have to realise that they are going to be human and they are going to - and so we are going to have to engage their interest. We also need to be respectful of their jobs and sympathetic to the other demands that they have. But principally we are trying to get them into a position where they can assess that they have reasonable grounds to suspect the crimes being committed, and that should then be enough for them to make an arrest and search.

Now as part of that assessment, the police would also consider whether it would be in the public interest to see if our search and seizure order is executed first, or whether they should make an arrest straight away. And one of the things the police will be conscious of, that it may not be really fair on Ethel to ask her to comply with one order and then if she does not then arrest her for something else.

That is one reason why the police may just decide that they will just go in and arrest her for handling stolen goods. That of course would then frustrate the execution of our search and seizure order, but at least we know the laptop and other items are safe, at least for the time being.

If we do have to rely on the search and seizure order and she does not comply, we are in a slightly better position though than in Canada, because the warrant for arrest that would actually be, in the end issued, would be what we call a benchwarmer and that can be executed by the members of the local police force.

So if we know that she has ended up in her home in Egham, we can probably get members of the local Metropolitan Police to attend on the premises there.

Gordon: Huw – can I interrupt you. We have heard from Glen about Interpol Red Notices and the mutual legal assistance treaty provisions. Does any of that help in the UK?

Huw: Well most certainly! And in actual fact, if you can imagine, one of the biggest problems we are going to have, is identifying Ethel and if we can get them on the plane as it lands at Heathrow, then all the better for that, because the police will then attend the plane, they will be able to identify her and we do not have to worry about whether then she puts on a disguise as she passes through arrivals.

But the reality is whilst there is a lot of co-operation between the law enforcement officers, we may actually struggle to get co-operation to occur so quickly on this occasion. This offence may not be at the top of the police agenda, but certainly I would be giving a call to Glen to see what the string he can pull for me.

Gordon: And we are still in the EU, just. Is there anything to be gained from EU procedures?

Huw: Yes. I was waiting for you to bring that one up! Yes you are right. We are hanging in there for the moment. Now, under EU law, the customs officials are obliged to seize IP infringing goods if they have been given good notice of description of what those goods are.

Now the definition of IP infringing you could say, it would include copyright infringement, but it would not actually include infringing [unclear 46:22] trade secrets directive. But the problem we are going to have here with customs is really the short notice.

The relevant EU law provision provides that the customs should really be given at least 30 days' notice and it is generally aimed at the more normal commercial go-to related shipments.

But nevertheless, customs and board officials can seize any illicit goods under UK law but convincing them to act quickly or getting in front of them, may well be a bit of a struggle.

It will be interesting actually to hear from Philippe in a moment as to whether he thinks that the EU law helps here at all.

Gordon: Thanks. Before we get on to Philippe. Aside from the difficulties with the customs, on the whole do you think you are going to get her?

Huw: I would like to think so and I know in other cases - one or more of the steps we have described, have worked but we really cannot underestimate the practical difficulties in achieving these steps.

We are going to have to move very quickly - and quicker than Ethel and that is really where the issues are going to come in and the problems that [unclear 47:25] for us.

But if we have got the advanced knowledge and yes, it is already prepared by colleagues elsewhere and provided we can use the great co-operation between us, it does make achieving a result more likely.

But we are going to have to be prepared for every eventualities. I mean the possibility is, she is going to slip through the net here as well. And so all the time we want to be creating a paper trail for use in other jurisdictions, such as the Dubai or Russia, should she end up there. And we will be wanting to gain as much intelligence as possible as we can.

Gordon: Last thing from you in the UK Huw, if the fact scenario was slightly different and, for example, if you know there was an obvious offence in the UK, what would you be looking to do, for example, on an ex-parte basis?

Huw: Well I guess that really comes down to how much information and evidence we really have, but certainly we could be thinking about getting an order against an airline we think she is going to be travelling on to say that they are not going to allow her on the aircraft.

We could even look at the freezing of bank accounts and that could be done on an international basis too. And even we can look at seizing her passport, but that is all going to depend very much on the facts of the case and what we know about the case regarding Ethel here, I suspect on those facts, there is going to be some difficulties for us, but it could work in other scenarios.

Gordon: Thanks Huw. Well she gets away again, and she is on the connecting flight to Paris. This was too soon after her arrival for us to reach her in the airport lounge. So now she is bound for Paris on a flight which is due to connect to Dubai. So [the] question is will she leave the airport or will she simply connect again, but has her luck run out, because the French air traffic controllers are on strike and there are no flights out of Paris. Is this our big chance? It looks like she would intend to have to leave the airport and stay at a nearby hotel. Can we get her now?

So besides Interpol Red Notices what would be the best way to catch our thief in France Philippe, over to you.

Philippe Rousseau: Welcome to Paris. Well indeed the most likely way to stop Mrs Lien would be as Glen mentioned before, an alert to Interpol but besides this media in France, the most effective way would be through extradition proceedings. France has concluded international treaties for extradition with both Canada and China, under which there is a reciprocal obligation to hand over any person who is being prosecuted by the authorities for an offence punishable of at least one year imprisonment for China and two years' imprisonment for Canada.

And fortunately, the facts of the case - violation of trade secret by Mrs Lien constitutes mainly three offences in France which will carry of at least two years imprisonment. So it is possible for Canada or China to request the extradition of Mrs Lien. In a case such as this one where Mrs Lien is fortunately detained by the French strikers. The emergency extradition procedure is definitely the right procedure to go for.

First, the competent authorities in Canada or China may provide directly a written request for a provisional arrest to the French Attorney General. In this case it would be the one sitting in Bobigny which is a city having jurisdiction about the area of what was she shall go, and upon receipt of this request the Attorney General may immediately order the arrest of Mrs Lien - immediately after she gets out of the plane.

Upon the arrest of Mrs Lien, whether at the Airport or in a hotel room, she would be immediately presented to a police officer. So her identity would be verified, she would be informed in a language she understand, so I guess Chinese and/or English, of the existence of the content of the request for this provisional arrest, and the Attorney General would certainly consider the case as to be sufficiently serious to have immediately Mrs Lien detained, and this is the very interesting part of the process because as soon as she is detained all of her personal belongings would be seized including, of course the laptop, any kind of media and cell phones, so she would definitely be deprived of any potential use or transmission of the threat secrets.

Then the steps would consist either for Mrs Lien to consent or not to the extradition. If she consents to the extradition, let us be optimistic, she would be subject matter of a five days proceedings by virtue of which she would be extradited within a, let us say one to two weeks period of time so either to Canada or to China depending on the requesting country.

In case she is not consenting to extradition, she would appear before the chamber of investigation, which will have to rule over one month as from the receipt of the - I would say real extradition request which would not then be the provisional one, which is supposed to be sent one month after the initial one.

The whole process might take two months and during this period of time, of course she would remain under custody and would not be able to use any of the stolen goods. As far as the emergency measures procedure, its concern this is it, after having verified French case law it is used, but frankly there is no precedent in that of theft or trade secret theft during the last years.

Gordon: Okay, so assuming the offence of data theft might have occurred in French territory, what other possibilities would there be then?

Philippe: Well assuming that the violation of trade secrets would have occurred in the French territory, we would be able to use civil and criminal measures but I would say that, I am afraid those would be ineffective given the very short time frame we have got here. Say max 72 hours, because in French Civil Procedure you can obtain provisional measures to an emergency judge, but the notion to be used is the one of manifestly illicit trouble or imminent harm and it is assessed on a case-by-case basis by the Judge.

The problem is, conversely to Canada and the UK I would not be authorised to submit such a brief ex-parte, so the problem there would lie in the fact that I would need to serve a writ to Mrs Lien in a hotel room, for example and this of course would need to be including the supporting exhibits translated in a language she understands.

It would prove to be extremely difficult to obtain all of this in a 72 hours period of time, so I would conclude by saying that well it is unfortunately as far as civil and criminal procedures are concerned too short for me to obtain really efficient measures on the French territory.

Gordon: Okay Philippe, just sum up at the end then and you know where do you think she is got to. You think extradition is the best answer in the end.

Philippe: Absolutely yes. Definitely.

Gordon: Any good news?

Philippe: Sorry?

Gordon: Any good news for us?

Philippe: Yes absolutely! The good news is, you have sent me a very recent photograph of Mrs Lien and we were able and authorised to hire the services of a private investigator and this private investigator has followed Mrs Lien, so we know that she is on the verge of boarding and he has been specific enough to let me know where would be the potential places she might end up.

What they are able to call my colleagues in Moscow and Dubai to let them know that Mrs Lien might be on her way to their places.

Gordon: Well there we go. She slipped away again. This time we are not sure where she is going. Her original flight to Dubai was cancelled because of the strike, but knowing the business of her new employer we can take a fair guess she is either headed for Dubai - as originally planned or Moscow.

There are flights leaving Paris to both destinations of similar times, so now we must set up our options in both destinations, just in case.

Let us go first to Dubai and see what plans Jon Parker is making for her.

Jon Parker: Hi Gordon, welcome to the Middle East. Well, in theory if - through the work done by Glen - if Interpol has issued the red notice then she will be arrested on landing, so she will have a very different welcome to the Middle East.

If the red notice only issues after she is passed through the airport, but is in country. There is still a very good chance of her being arrested? Just in the last few weeks we have had a high-profile case here, where a Nigerian social media celebrity was arrested in Dubai and extradited to the US on both cyber fraud and money laundering charges.

Gordon: So we know that the MLAT and Interpol Red Notices may take a bit longer than a few days to issue. But assuming she has been able to enter the UAE, what steps could Optimus take against her when she has got through the door.

Jon: There will be some steps Optimus will be able to take, but there are some practical challenges we will need to look at initially. The first being, we will need to hold a valid legalised power of attorney from Optimus and without that we are unable to take action, and it may take up to a month before we get that legalised power of attorney in our hands.

Because of the pandemic, that has been increasing even more recently due to the closure of notaries and embassies overseas. The other challenge we have is, only the police are able to investigate individuals here. So unlike in Paris, we will not be able to put a private investigator following her, instead we will have to rely on the evidence being gathered by Ivy in China, Huw in the UK and other colleagues around the Gowling WLG Network, in order to bring that forward in Dubai to rely on in a case against her?

But that evidence will need to be both notarised and legalised in the source country and then translated into Arabic, so again this leads to delays and also significant costs in legalisation and translation fees.

Gordon: So when you get those practicalities addressed then, so what are the possible actions that you could explore. I mean, on the subject of power of attorney, just a moment if I can ask you on it, a very quick question on that. Is it possible that you could be in possession of sort of general powers of attorney from a company that would enable you to act quickly, or do they have to be specific to the circumstances?

Jon: Without trying to give too much of a lawyer answer, my apologies. To act on that here in the UAE, the officials will need to see in black and white that we have the ability to take action against, say trade secrets, copyright or intellectual property infringement, provided we have a general clause amongst that then we could we could rely on that power of attorney. But assuming we have the power and we are able to take action, the first thing we will need to show is that she is actually committed the offence here.

Without being able to show that she has either copied the materials here or emailed the materials from the UAE, the civil courts or the criminal authorities will not take any action, other than through the red notice. But if we are able to show that an offence has been committed here, we can explore actions under the patent law for know-how copyright law and even cyber-crimes law, so through her copying an element of [unclear 01:00:09] that is an actionable offence under the patent law, which will allow us if she is due to make unlawful use - disclosure or publication here, we can then go to the court of urgent matters to obtain an attachment order to try and seize and preserve the stolen materials.

Unfortunately under the federal laws we are not fortunate enough to have powers for injunctions here. They are not provided for, so the attachment order is the only real option we have for the onshore courts.

But again in copying, it also gives rise to action under the copyright law which carries criminal provisions, so if we can show that she interfered with electronic protection around these materials, this is a criminal offence under the UAE copyright law. And because of making electronic copies and sending email copies during her time here, that opens her up to action under the cyber-crimes law. That carries both significant fines and jail turn. If she is sentenced here she will be deported at the end of her prison time.

Gordon: Right. Well that is very interesting Jon, thank you. As you know I have been to your offices/our offices in the Dubai International Finance Centre free zone many times. Would there be any jurisdictional issues, if for example, she stayed at one of the one of the nice hotels in the DIFC like Jumeirah Towers where I stay.

Jon: Yes. It could be very fortunate for us if she does. But just to explain, the UAE is a federation of seven emirates and we have over forty-five free zones. Two of these zones have their own legal systems common-law systems - so the Dubai International Financial Centre, where I am sitting at the moment and then the equivalent in Abu Dhabi - the Abu Dhabi Global Markets.

They are both common-law legal systems, where the onshore court is a civil law. So if she stayed in one of the hotels within DIFC and committed these offences within DIFC, it does open the opportunity for us to bring action through the DIFC judicial system.

The DIFC is one of the first free zones to issue its own IP laws. These came into a force last October and they offered protection to both copyright works and trade secrets and so what we may be able to look to do is to bring an action against her under both copyright and trade secrets of the IP laws here, through filing the complaint with either the Commissioner for IP or with the DIFC courts themselves.

So the Commissioner for IP is a tribunal and has the power to issue orders, whereas the court has the power to issue orders but also, unusually, powers for an injunction. For us to have the greatest impact and chance of stopping her assuming the offence was here in the DIFC, we would look to file the action with the DIFC courts in order to try and obtain this injunction.

And so I guess, from a closing point for the UAE. Provided we have the power of attorney and provided we can show that she has committed the offence here, then we can explore civil criminal actions through the relevant courts or the criminal authorities here in the UAE.

Gordon: Thank you very much Jon. I am very conscious of time that we have drifted over a little bit but let us just hope that a few people can stay with us and finish off.

So, Moscow. Alexander, what plans have you got in place in Moscow.

Alexander Christophoroff: Well, the story is generally outside Russia. Although the intent was to sell to a half-Russian company, generally this time Russia is totally free from any accusations or suspicions. That is just like in France, which Philippe explained in details.

Russian authorities have no jurisdiction, even if Miss Lien made a stop and rush on her way between countries, she could be only dealt with in case of a request for extradition or a red notice by Interpol which generally works just like in France - or if she were a Russian citizen, but it is not the case.

Of course capture stolen the secrets here, we could have criminal investigation opened against her and in brief, stealing in trade secrets is a crime in Russia, with a maximum penalty of seven year imprisonment.

This investigation is made by the police and that is quite independent from the parties. The suspect in such case, as a rule cannot be detained during investigation as a matter of freedom of entrepreneurship, but home arrest can be applied. If the suspect has no home in Russia for a home arrest, or violates the home arrest regime then she can be detained.

After the investigation, police sends the case either to justice of the peace, if it is not aggravated offence or to a district Judge if it is aggravated offence. The sentence is used/issued in a bench trial. They only said it is up to seven year imprisonment, and although such cases are not common I believe we are right here. Obviously stealing employers property is also a crime in Russia, like everywhere so we would make the entire case more understandable - we can do it.

Gordon: Thank you very much indeed. Okay where did she end up? Well she made a mistake. She sent a copy of the secret documents from the thumb drives in her new employers from Moscow from the her laptop in her hotel in Dubai, and she ended up in prison in Dubai and the thumb drive, laptop and papers are safely in the hands of the authorities in Dubai.

The thief has been thwarted and the recipe is safe. Now we are not going to have any time for questions because I have already said that I have run over, so let me just do a very quick summary before we go.

We could probably and probably would have caught up with Ethel much earlier in her journey, but for the purpose of today's demonstration she has been a bit more slippery and got right to the end of her journey before we caught her. What have we learned from this? Well there are global systems, co-operation between agencies all around the world, which are designed for just this kind of situation. The trick is to know the systems and who to contact to get things moving quickly. There is no reason why relying on maintaining secrecy should give rise to inferior enforcement. Unlike the world of patent protection, there are a host of creative options, including the use of experienced criminal authorities which can be brought into play.

The removal of secret information is a crime just like any other theft, even if the assets are not quite as tangible as a thumb drive and an operations manual, removal still amounts to theft and means that the full range of civil and criminal options in the relevant countries are available.

Was this a fanciful scenario? Well, no not actually. It was an amalgam of events which have happened in different cases in different countries around the world. One of the issues we discussed at the first trade secrets webinar earlier in the series, was the creation of security policies to underpin reliance on secrecy for protection of Rights. The vigilance of a security officer, the existence of a network of CCTV cameras, the ability to trace items downloaded from computer systems.

These are all aspects of a strong secrecy policy designed to protect the most valuable assets of the business.

So there we are! Well planned and prepared systems, supported by knowledgeable and well prepared people can give rise to fast action and successful outcomes.

Thank you very much to my wonderful panel and to all of you - our guests today for your kind attention throughout today's event.

In the next webinar in the series in two weeks' time, we are returning to the world of patents. Now you might think we are well on with the program now, but the title of the sixth webinar is "the game begins" and we are looking at the strategies involved in the early stages of patent litigation from the viewpoint of the claimant, and then the following week we will be looking at the same topic for in the perspective of the defendant.

In the meantime a recording of today's event will be appearing on our website shortly at goxl.gowlingwlg.com as well. So if you would like to watch again or share with colleagues, that is where it will be.

Thank you once again for your kind attention today. We look forward to seeing you again. One of our next events in the series and this broadcast will close automatically in just a few moments. Thank you very much indeed.