MEXICO Law and Practice Contributed by: Carlos Hernandez, Roxana Aispuro and Luis Emilio Moncada, BC&B Law & Business
It is also a best practice to have employment contracts that include clauses related to the non-disclosure of information and trade secrets, as long as the confidential information and the trade secrets are considered as such according to the requirements of the law. 4. Safeguarding Against Allegations of Trade Secret Misappropriation 4.1 Pre-Existing Skills and Expertise Article 163 of the FLPIP foresees what a trade secret consists of. Trade secret means any infor - mation of industrial or commercial application kept confidential by the person who exercises legal control over it, which gives or maintains a competitive or economic advantage over third parties in the performance of economic activities and in respect of which said person has adopted sufficient means or systems to preserve its con - fidentiality and restricted access. Therefore, any information that is not included in that defini - tion can be considered an employee’s general knowledge and skills (ie, non-protectable). In addition, it is important to mention that infor - mation that is in the public domain, information that is generally known or easily accessible to persons within the circles in which such informa - tion is normally used, or information that must be disclosed by law or court order will not be considered an industrial secret. 4.2 New Employees It is important to mention that Article 167 of the FLPIP states that the individual or legal entity that hires a worker who is working or has worked – or a professional, adviser or consultant who renders or has rendered services – for another person, with the purpose of obtaining industrial
secrets from the latter, will be considered liable under the terms of this law. Therefore, it is impor - tant for the employer to confirm the confidential information to which the employee had access and whether this information is related to obtain- ing a competitive market advantage or implies unfair competition. 5. Trade Secret Litigation 5.1 Prerequisites to Filing a Lawsuit As mentioned in 1.14 Criminal Liability , the FLPIP foresees both infringement and criminal conduct. A civil lawsuit alleging theft of trade secrets can be initiated by filing an infringement action before the MIIP. Prior to or during the infringe - ment action, the plaintiff can request prelimi - nary injunction measures until the proceeding is resolved with a final decision. The preliminary injunction measures will be granted and implemented by the MIIP if the plaintiff, among other things: • posts a bond to cover possible damages and losses to the infringer should the plaintiff fail to obtain a declaration that an infringement has been committed; • proves the existence of their IP right;. • proves the marking requirement (this can be done with a publication in a newspaper); and • proves that: (a) the IP right (trade secret) has been vio - lated; (b) it is highly probable that the IP right will be violated; (c) the evidence proving such violation will be destroyed; or
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