ITALY Law and Practice Contributed by: Giovanni F Casucci, Matteo Casucci, Serena Spadavecchia and Alice Viviana Niccoli, EY Tax & Law
legal safeguards) does not affect the protection as long as confidentiality is maintained. To miti - gate the impact of any disclosure, whether acci - dental or controlled, owners should implement robust security measures, use NDAs with all rel - evant parties, and ensure there are clear internal protocols for handling sensitive information. In the event of accidental or unauthorised dis - closure, owners should act promptly to isolate the incident by retrieving disclosed property, enforcing confidentiality covenants with involved parties, and enforcing legal steps as needed to prevent ongoing misuse. One way to detect potential vulnerabilities is by tracking who accessed the trade secret and what the condi - tions were under which they did so. 1.10 Licensing Owners of 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 com - pliant with the rules imposed by EU regulation 316/2014. In the event that 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 exist - ence 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 confidenti - ality. To maintain the trade secret after granting a licence, the owner must take proactive steps, such as monitoring the licensee’s compliance with the agreement, enforcing contractual obli - gations, and ensuring that any sub-licensing or third-party access is subject to the same confi - dentiality requirements. Frequently, trade secrets (as know-how) are included in mixed licence agreements with pat - ent 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 licensee’s ability to carry out research and development, arguing that such restrictions are indispensable 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 pri - marily because their protection is not granted through public registration or disclosure, but rather through maintaining the information’s secrecy. As a consequence, while the exclusiv - ity of other IP rights is limited in time due to the nature and logic of the public registration or dis - closure, trade secrets remain valid and enforce - able 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.
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