ITALY Law and Practice Contributed by: Giovanni F Casucci, Matteo Casucci, Serena Spadavecchia and Alice Niccoli, GA-Alliance
1.10 Licensing Owners of a trade secret can license the use of their trade secret based on agreements in which the parties define the scope of use, the period and the obligations of the licensee to maintain confidentiality. Of course, such agreements must be fully compliant with the rules imposed by EU Regulation 316/2014. If the trade secret holder wishes to grant a licence, the contract must explicitly identify the trade secret and link its transfer to related materials. Licensing does not inherently affect the existence of the trade secret as long as it is disclosed in a controlled manner and under stringent conditions that preserve its secret nature. The agreement should also: • specify limits on the use of the trade secret; • prohibit unauthorised sharing; and • outline measures to safeguard its confidentiality. To maintain the trade secret after granting a licence, the owner must take proactive steps, such as moni - toring the licensee’s compliance with the agreement, enforcing contractual obligations, and ensuring that any sub-licensing or third-party access is subject to the same confidentiality requirements. Frequently, trade secrets (as with know-how) are included in mixed licence agreements with patent rights because they offer some advantages to the licensor, such as: • the possibility to extend the validity of the licence agreement beyond the expiry date of the patents involved; and/or • the possibility to justify restrictions on the licen - see’s ability to carry out research and develop - ment, arguing that such restrictions are indispen - sable to prevent the disclosure of the licensed know-how to third parties. 1.11 What Differentiates Trade Secrets From Other IP Rights Trade secrets differ from most other IP rights primarily because their protection is not granted through pub - lic registration or disclosure but rather through main - taining the information’s secrecy. As a consequence, while the exclusivity of other IP rights is limited in time
due to the nature and logic of the public registration or disclosure, trade secrets remain valid and enforceable as long as confidentiality is maintained. Unlike patents, which require formal registration and are limited to new, inventive and industrially applicable inventions, trade secrets do not need to meet specific originality criteria or undergo registration. Compared to all other IP rights (including patents, trade marks and industrial designs) which also require formal registration under Italian law to secure exclusive rights, trade secrets do not offer monopoly rights over the information itself; instead, they protect against unauthorised use or disclosure. 1.12 Overlapping IP Rights In Italy, it is possible for a claimant to assert trade secret rights alongside other forms of IP rights, pro - vided that the claims relate to distinct aspects of the same IP or business advantage. Trade secrets, however, can sometimes overlap with patents and copyrights depending on the specifics of the case. For example, a claimant might allege both patent infringement and trade secret misappropriation when the defendant has used both the patented invention and confidential know-how that was not disclosed in the patent application. Similarly, in cases involving software or databases, trade secrets can protect undisclosed algorithms or functionality, while copyrights safeguard the expres - sion of these ideas, such as source code or data - base structures. Trade secrets may also be invoked in situations where confidential marketing strategies or branding techniques have been unlawfully disclosed or exploited, particularly in the lead-up to the launch The Italian CPI, Article 99 already provides the pos - sibility to take action against anyone who, at the time of acquisition, use or disclosure, knew or, according to the circumstances, should have known that the trade secrets had been obtained directly or indirectly from a third party who used or disclosed them unlawfully. This can also cover the inducement to breach a con - fidentiality duty. of a new brand or trade mark. 1.13 Other Legal Theories
90
CHAMBERS.COM
Powered by FlippingBook