In accordance with Directive (EU) 2016/943 of the European Parliament and of the Council of 8 June 2016 on the protection of undisclosed know-how and business information against their unlawful acquisition, use and disclosure, Legislative Decree of 11 may 2018, n. 63 – in force since 22 June 2018 (“Legislative Decree”) – intends to guarantee an (innovative) enhanced protection, at both civil and criminal level, for the so-called “trade secrets”.
This new directive marks the transition from the concept of “confidential business information”, already present in the Italian Industrial Property Code (i.p.c.), to that of “trade secrets” derived from EU regulation. Moreover, the Legislative Decree provides significant changes to arts. 98, 99, 124, 126 and 132 i.p.c. and includes art. 121-ter i.p.c. which protects confidential trade secrets during the course of judicial proceedings.
Specifically, the newly amended art. 98 i.c.p. introduces the concept of trade secrets into Italian regulation, which comprises all of the business information and technical-industrial experiences, including commercial ones, that are subject to the holder’s legitimate control. These are defined by the concurrence of three elements: (a) the confidential nature of the information; (b) the fact that such confidentiality entails an economic value; (c) and that the rightful holder must subject the information “to reasonable steps to keep it secret”.
Furthermore, art. 99 i.p.c., as amended, provides a better outline for the scope of civil liability regarding those who acquire, use, or disclose trade secrets, both in the case of malicious or unintentional circumstances.
Another relevant innovation is the amendment of the Italian Criminal Code (c.c.). The Legislative Decree modifies art. 388 c.c. and specifies that the crime of malicious non-execution of judicial measures also extends to the non-compliance of prohibitory or corrective judicial measures concerning industrial property rights and confidentiality breaches.
Finally, the amendment of art. 623 c.c. particularly addresses the protection of trade secrets by sanctioning the crime of economic exploitation and providing an aggravating circumstance if committed through the use of IT tools. However, this amendment specifies that this crime cannot be prosecuted except upon a complaint (so-called “querela”) filed by the injured party – that is, if the violation of trade secrets is known, the injured party which intends to avail itself with this new protection must be particularly attentive to the terms provided by law for the filing of such complaint.