ITALY Law and Practice Contributed by: Monica Riva, Alessandra Ottolini, Francesco Chierichetti and Giulia Ghidini, Legance
Protectable Information . Novelty in the patent sense is not required. If those requirements are not fully met, know-how may still be contractually protected, but enforcement will depend on the scope and clarity of the relevant con- tractual obligations. There is case law recognising that know-how which does not meet the requirements of a trade secret may nonetheless be protected against misappropriation under the rules on unfair competi- tion, pursuant to Article 2598, No 3 of the Civil Code. 6.3 Ownership, Creation and Employee Know-How Know-how created by employees in the course of employment is generally treated as belonging to, or being usable by, the employer where it forms part of the employer’s organisation, confidential information or business processes. Employees may retain and use their general professional skills and experience, but they may not disclose or exploit the employer’s con- fidential know-how or trade secrets to the employer’s detriment. Employees are subject to statutory duties of loyalty and confidentiality, as described in 5.3 Misappropri- ation of Trade Secrets . These duties may continue after termination where the information remains confi- dential or where specific contractual obligations apply. For contractors, consultants and joint development partners, ownership and use rights should be express- ly regulated in the agreement. In the absence of clear clauses, disputes often turn on who created the know- how, who funded or directed the work, what materials were exchanged and what confidentiality restrictions were agreed. 6.4 Protection Through Contract and Confidentiality Know-how is commonly protected through NDAs, confidentiality clauses, non-use obligations, access controls, return or destruction obligations, audit rights and clauses restricting disclosure to employees, affili- ates or advisers on a need-to-know basis. In collaboration, R&D, licence and supply agreements, parties typically:
experts, witnesses and other participants from using or disclosing trade secrets obtained in the proceed- ings, even after the case has ended. 6. Know-How 6.1 Definition and Legal Basis of Know-How Italian law does not provide a single statutory defini- tion of know-how. In practice, know-how is under- stood as technical, commercial or organisational knowledge and experience capable of conferring a competitive advantage. Know-how is broader than trade secrets. If it is secret, commercially valuable and subject to reasonable con- fidentiality measures, it is protected as a trade secret under Articles 98 and 99 of the IP Code. Even where these requirements are not met, misap- propriation of know-how may still be challenged under unfair competition rules, particularly Article 2598, No 3 of the Civil Code. In any event, protection can and should also be reinforced contractually, through con- fidentiality obligations and specific know-how provi- sions. 6.2 Protectability Requirements and Scope Protectable know-how commonly includes: • manufacturing methods; • technical processes; • formulas; • engineering data; • algorithms; • software documentation; • testing protocols; • product specifications; • quality control procedures; • customer lists; • commercial strategies; and • organised databases or operational information. If know-how is protected as a trade secret, it must satisfy the requirements of secrecy, commercial value arising from secrecy and reasonable confidentiality measures, as set forth in in 5.1 Legal Framework and
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