Trade secrets: Definition and Regulation
In particular, art. 98 IPC defines as trade secret all “company information and techno-industrial experiences, including commercial ones, being ‘secret’ (in the sense that they are not, in their entirety or in the precise configuration and combination of their different elements, generally known or easily accessible for experts and operators in the field), having an ‘economic value’ as secret and being ‘subject to measures deemed to be reasonably adequate to keep it secret”.
The definition of trade secret also includes “data relating to trials or other secret data, whose processing entails a considerable undertaking and whose presentation needs a previous authorization in order to introduce onto the market chemical, pharmaceutical or agricultural products implying the use of chemical substances”.
As a matter of principle, it is considered as a trade secret all that information guaranteeing an economically significant competitive advantage to the legitimate holder (even though this advantage can be considered only in relative terms, so in comparison with possible competitors) and effectively kept secret.
But which measures can be considered adequate so that the information subject to trade secret is not disclosed?
First and foremost, it seems that the absolute inaccessibility of information is not requested. However, the acquisition of such information shouldn’t be that easy and a particular effort should be necessary to get it. In fact, it is to be considered as secret the information that is impossible to obtain with reasonable time and costs.
Secondly, these measures should be considered with an ex ante judgment, that is to say by reasoning just as if the possible illegal misappropriation hasn’t occurred yet.
The case law can provide some guidance to protect trade secrets.
For example, the use of passwords and/or the fact that this information is available only to a limited number of employees within the company can be considered an appropriate measure, although it has not always been considered enough.
Different opinions have been provided by case law in those cases where a company revealed important information to external partners without having them sign a non-disclosure agreement.
With regards to rights granted to legitimate holders of trade secrets, according to art. 99 IPC, clause 1, the legitimate holder has the right to forbid to third parties – except if he/she gives consent – to unlawfully acquire, reveal or use such secrets, unless third parties have managed to obtain the trade secret independently.
This article has to be interpreted in conjunction with articles related to unfair competition, regulated by the Italian Civil Code. Therefore, if the above-mentioned illicit actions regard information which is not considered as trade secret according to art. 98 IPC, for example in the case of theft of information not subject to adequate secrecy measures, art. 2598 n. 3 of the Italian Civil Code is applicable, when there are the requirements laid down for unfair competition.
Art. 99 IPC has been amended after the provisions introduced by Legislative Decree N.63/2018, which have also modified both the Industrial Property Code and the Penal Code regarding trade secrets, implementing the EU Directive 2016/943. As for art. 99 IPC, clauses from 1-bis to 1-quater have been added, broadening the range of prohibitions which the legitimate holder is entitled to.
Art. 99, clause 1-bis specifies that the acquisition, disclosure and use of trade secrets are illicit actions even when a subject knew or, under the circumstances, should have known, that trade secrets had been obtained directly or indirectly by a third party using or revealing them illicitly. Therefore, the prohibition regards not only who obtains and potentially spreads or uses the secret information directly and illicitly, but also those who obtained it indirectly following the illicit disclosure or usage by a third party, which they were or should have been aware of.
Art. 99, clause 1-ter specifies some applications of trade secrets considered as illicit, in particular regarding infringing goods, whose design, production, features, functions or commercial exploitation significantly benefit from such trade secrets. In particular, it establishes that the production, offer, marketing, importation, exportation or storage of infringing goods all represent an illicit use of trade secrets, when the subject doing such actions knew or, under the circumstances, should have known that those trade secrets were used illicitly.
Art. 99, clause 1- quater specifies that the legitimate holder’s rights and the actions arising from the illicit conducts described in art. 99 shall be barred after a period of five years.
Moreover, Legislative Decree N.63/2018 further amended the judicial proceedings regarding trade secrets.
In particular, to effectively protect the secrecy, Art. 121-ter was introduced in the IPC establishing that the judge can forbid the involved subjects from using or revealing trade secrets deemed as confidential and can also take measures to protect the secrets’ privacy, such as the shadowing or omission of the parts including such secrets. In the same way, Art. 126 IPC as modified by Legislative Decree N.63/2018, states that even in the judgment’s publication the judge should take adequate measures to guarantee trade secrets privacy’s protection.
Moreover, Art. 124 IPC on corrective measures and civil sanctions following a judgment about a right violation has been amended as well, specifying which circumstances should be considered by the judge and also clarifying that as an alternative to the measures under this article and upon request of the party concerned, the judge can order the payment of a compensation, after verification of the specific requirements.
Finally, the Legislative Decree N.63/2018 also modified Art. 132 IPC about the precautionary proceedings regarding illicit acts towards trade secrets and established that as an alternative to precautionary measures and upon request of the party concerned, the judge can authorize the latter to continue to use trade secrets, following a suitable deposit for the possible compensation of damages suffered by the legitimate holder.
The extent of information which can be subject of a trade secret includes both technical aspects also suitable to patents and knowledge coming from the business management’s experience, for example market analysis, clients’ lists, marketing strategies, promotional tools and others, which can be given protection but cannot become patents, so they cannot result in an industrial property right.
As a consequence, if on one hand with patents it is possible to obtain an industrial property right with a limited duration, on the other hand a secret can remain secret for ever (…at least until somebody else gets to the same information irrespective of the legitimate holder!).
Depending on cases, trade secrets can be the only available protection tool in order to obtain an economic advantage or they can represent a valid alternative to patents.
However, in case of patenting, trade secrets can be an accessory element to patenting itself, if considering that technical information necessary to describe a technical solution, which is object of a patent application, should be kept secret before filing it.
Due to the great extent of information and the different requirements of legitimate holders, it’s not possible to identify a protection strategy in advance and it is always advisable to seek an expert’s opinion in order to consider from time to time the best protection, based on the information type and the legitimate holder’s needs.