ITALY Law and Practice Contributed by: Giovanni F Casucci, Matteo Casucci, Serena Spadavecchia and Alice Niccoli, GA-Alliance
3. Preventing Trade Secret Misappropriation 3.1 Best Practices for Safeguarding Trade Secrets Companies should adopt internal procedures aimed at identifying their trade secrets. To this end, it is for example advisable to: • periodically examine all company products, ser - vices and processes that exploit trade secrets and describe in a report, a manual or technical specifications (to be subject to strict confidentiality measures) the advantages brought about by such trade secrets; • trace the previous versions of the know-how in question that demonstrate the creation and evolu - tion of the secret data over time; • proceed with the forensic acquisition of the two previous points and schedule specific periodic audits to allow the company to continuously and incrementally identify its know-how, from the moment it takes shape, and allow the accurate and cost-effective application of reasonable security measures appropriate to the value of the business and the secrets to be protected; and • assess the feasibility, cost and economic conveni - ence of the reverse engineering process of the identified secret, also in order to prove the exces - sive cost of such a procedure if performed by a third party. Analysing the body of case law that has developed over the years allows for the identification of “best practices” for safeguarding trade secrets. Courts have particularly valued: • a detailed description of the protective measures adopted, along with justification for their suitability under the specific circumstances, provided by the company (for example, showing that documents or information are stored in locked archives or digital storage requiring password access to folders con - taining such confidential material, and use of per - sonal access badges to certain rooms or archives); • a breakdown of information by areas of compe - tence, with provision of confidential credentials for access thereto and the preparation of digital
of whether the trade secret is publicly disclosed or simply misused internally. Italian courts recognise that employees – especially those with access to sensitive information – have a heightened duty of loyalty, with trade secrets protected by both industrial property laws and fiduciary duties. According to Article 2125 of the Italian Civil Code, the fiduciary duty of the employee can also be extended after the employment contract through a written agree - ment, which must provide reasonable compensation for the employee and limit the duty to a specific sub - ject, time and place. Employers can reinforce these obligations through NDAs or confidentiality clauses in employment contracts, which clearly define the scope of permissible actions. While employees are free to use the skills and general knowledge acquired during their employment, they are prohibited from exploiting specific trade secrets to benefit competitors or themselves. 2.3 Joint Ventures The general rules on trade secret protection apply to joint ventures. 2.4 Industrial Espionage In Italy, industrial espionage is handled through a mix of criminal sanctions (Italian Criminal Code) and civil remedies (CPI), offering trade secret owners robust legal protection. Industrial espionage is a crime punishable under Arti - cles 621 (disclosure of the content of secret docu - ments), 622 (disclosure of professional secret infor - mation) and 623 (disclosure of scientific or industrial secrets) of the Italian Criminal Code, and is punishable – depending on the severity – by fines or imprison - ment. Criminal penalties, including imprisonment and fines, are enforced for espionage-related offences, while civil claims allow for significant remedies, such as damages, injunctions and the destruction of infring - ing goods.
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