ITALY Law and Practice Contributed by: Giovanni F Casucci, Matteo Casucci, Serena Spadavecchia and Alice Viviana Niccoli, EY Tax & Law
1.2 What Is Protectable as a Trade Secret Articles 98 and 99 of the CPI, which incorpo - rate the provisions of Directive (EU) 2016/943, protect trade secrets in Italy. The CPI protects many types of information, including technical, commercial, operational and scientific informa - tion if certain requirements are met. Specifically, according to Article 98 of the CPI, trade secrets consist of business information and technical-industrial experience, includ - ing business experience, subject to the legiti - mate control of the holder, as well as test data or other secret data, the processing of which involves considerable effort and the submission of which is a prerequisite for obtaining market - ing authorisation for chemical, pharmaceutical, or agricultural products involving the use of new chemical substances. Although not explicitly stated as a rule within the CPI itself, Italian case law considers it essential that trade secrets are “identified, that is to say, described in a sufficiently comprehensive man - ner so as to make it possible to verify that [they fulfil] the criteria of secrecy and substantiality” as per the clear definition in Article 1.1 lett (i) – (iii) of the EU Regulation 316/2014. Furthermore, for information to be classified as a trade secret, it must meet three key conditions: • it must be secret; • it must possess economic value due to its secrecy; and • it must be subject to reasonable measures taken by the owner to maintain its confiden - tiality (see 1.4 Elements of Trade Secret Protection ).
1.3 Examples of Trade Secrets Italian courts have detailed and extended the protection afforded by trade secret laws to vari - ous types of information: for example, technical information like formulas, processes, designs, prototypes, algorithms, and software code can be deemed trade secrets, as can business infor - mation such as customer lists, pricing models, and strategic plans. Also, technical drawings and lists of components of an installation, even if lacking in originality per se, are eligible for protection as trade secrets insofar as, either as a whole or in the individual configuration of each of them, they contain ele - ments that are not generally known, nor easily accessible to those in the industry. Scientific research data, including experimental findings and methodologies, as well as opera - tional knowledge and practical experiences such as manufacturing techniques or supply chain management processes, are also protected. 1.4 Elements of Trade Secret Protection According to the CPI, trade secret protection is granted provided that the information: • is secret, meaning that it is not, as a whole or in the precise configuration and combina - tion of its elements, generally known or easily accessible to experts and practitioners in the field; • has economic value because of its secrecy; and • is subject to reasonable measures taken by the owner to maintain its confidentiality, such as through access restrictions or confidential - ity agreements Under unfair competition rules, the Civil Code does not provide specific requirements for trade
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