The protection of know-how in Italy

In Italy, trade secret is regulated by art. 98 of the Industrial Property Code (Codice della Proprietà Industriale or CPI in brief). In particular, this article provides for the protection of all company information as well as technical and industrial experiences, including commercial ones, that are subject to the legitimate control of the holder. Art. 98 of the CPI, therefore, expressly fails to mention know-how. However, according to Italian case law, the latter can be deemed to fall within the scope of business secrets.

According to Italian case law, the information that can be deemed to fall within the scope of the protection laid down in art. 98 of the CPI is as follows:

a) Technical information: Information relating to both processes and products, whether patentable or not (e.g. user manuals, layouts, technical drawings, etc.). In particular and including but not limited to, case law has recognised (i) the implementation method of an industrial process (Court of Appeal of Bologna 19.05.1995, in GADI 96,355), (ii) secret chemical formulae (Court of Appeal of Milan 29.11.2002, in GADI, 2003, 662) and (iii) the technical drawings of plants and processes for the working and production of fibres (Court of Rome 31.03.2004, in GADI 04,997) as secret information eligible for protection.

Trade information: information concerning data or information that is necessary or useful to carry out trade functions. In particular, also lists of customers and suppliers were considered as eligible for protection also where the customers’ data could be obtained by the entrepreneur through market surveys (Court of Modena, separate section of Carpi 20.04.2005, in GADI 2005, 861). As far as the lists of suppliers are concerned, each case needs to be separately assessed. For example, obtaining a list of suppliers, also to find out the types of materials used by the competitors was considered as an unlawful exploitation of third party’s know-how (Court of Appeal of Bologna 5.06.1993 in GADI 3062). Moreover, also the lists containing contractual terms with customers and suppliers were considered eligible for protection (Court of Modena 21.01.1998, in GADI 99,292) along with the documents containing prices or quotations handed over during negotiations (Court of Perugia, separate section of Foligno 23.01.2008);

b) Administrative information: such as for example the documentation relating to the UNI, EN, ISO 9001 quality certification as well as the information and procedures regarding the company’s internal management (Court of Mantua, decision 12.07.2002 GI2003, 304).     

Pursuant to the second paragraph of the article under examination, “Protection is also granted to test data or other secret data, the processing of which requires considerable work and the presentation of which is subject to the authorization to introduce chemical, pharmaceutical or agricultural products that entail the use of new chemical substances into the market”.

For the above information to be protected pursuant to the first paragraph of art. 98 of the CPI, it must:

a) be secret “meaning that it is not, overall or in the exact configuration and combination of its elements, generally known or easily accessibile to experts and sector operators”;

b) have an economic value as it is secret;

c) be subject to measures deemed reasonably adequate to keep it confidential “by the people responsible for the legitimate control of the information”.

  As regards the above requirements, Italian doctrine and case law noted the following:

  • secrecy requirement: the concept of secret pursuant to art. 98 letter a) refers to the requirement of novelty; it is a relative and not an absolute concept. Therefore the subject of protection is the set of knowledge, of empirical origin and concerning the company’s production and commercial activity, that is hard to know and not generally known, or easily accessible by experts and sector operators;
  • economic value requirement: information must have an economic value as it is subject to secrecy constraints. In fact, thanks to secrecy, a company holding that information will be in a privileged situation compared to other competitors that don’t possess it and therefore will have an advantage to be exploited for an economic activity;
  • secrecy measures requirement: pursuant to letter c) of the first paragraph of art. 98 of the CPI, secrecy measures must be reasonably adequate; the relative nature of this notion is thus clear and must be concretely evaluated, taking account of specific circumstances. For example, case law has noted how: “the precise care adopted by a company in recording and classifying documents and the instructions given to personnel” is an element which supports the alleged secrecy (Court of Milan 31.03.2004 in GADI  4734). According to doctrine, the adoption of secrecy measures by an entrepreneur has two objectives, one is subjective and the other one is objective.

The first objective is to make the entrepreneur’s personnel and collaborators aware of his will to keep the information secret. This is achieved, for example, by providing specific confidentiality clauses in employment contracts of employees or collaborators, the signing of non-competition agreements with employees or the arrangement of unilateral deeds such as for example secrecy protocols, service orders, internal memoranda.

The second objective consists in preventing third parties from accessing the company’s confidential information held, for example, as a result of non-disclosure agreements. It is worth noting that case law has identified the use of computer files and databases provided with passwords and usernames as suitable measures to guarantee the confidentiality of information vis-à-vis third parties as well as the use of sheets with ad hoc wordings prohibiting the reproduction of the document specifying that the information contained in the document belongs to the company.

The confidentiality measures must be arranged by the person who has control over the confidential or secret information: therefore, not just the entrepreneur, but also the collaborators and employees of the entrepreneur.

Chiara Morbidi

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