MEXICO Trends and Developments Contributed by: Roxana Aispuro, BC&B Law & Business
considered a trade secret. The management and decision of which information must be consid - ered and maintained as trade secret is crucial for companies and institutions. Another important aspect to be considered in the protection of trade secrets is the misappro - priation of the information and how to prove this. According to the FLPIP, only the misappropria - tion of a trade secret is considered a violation of the law. It should be kept in mind that the disclosure of a trade secret to employees must be made under the signature of an employment contract that includes clauses regulating the disclosure of confidential information and trade secrets and/or under the signature of a specific confidentiality and non-disclosure agreement. In practice, it must be an obligation of the employ - er to warn the employee that – as part of their activities – they will have access to confidential information and trade secrets of the company. Article 166 of the FLPIP establishes that any per - son who (by reason of their work, employment, position, professional performance or business relationship) has access to a trade secret – the confidentiality of which they have been warned about – must refrain from disclosing it without the consent of the person who exercises legal control over it or of its authorised user. Additionally, Article 167 of the FLPIP mentions that any natural or legal person who hires a worker who is working or has worked – or a pro - fessional, adviser or consultant who provides or has provided services to another person – with the intention of obtaining trade secrets from the other person will be considered liable under the terms of the law. A natural or legal person who obtains information that includes a trade secret by any illicit means will also be liable.
Moreover, Article 164 establishes what is not considered misappropriation: • the independent discovery or creation of information claimed trade secret; • the observation, study, disassembly or testing of a product or object that has been made available to the public or that is lawfully in the possession of the person obtaining the infor - mation, provided that they are not subject to any obligation of confidentiality regarding the trade secret; or • the acquisition of information from another person in a legitimate manner, without obliga - tion of confidentiality or without knowledge that the information was a trade secret. As mentioned previously, the FLPIP entered into force in 2020. In comparison with the former Mexican law, the FLPIP makes changes regard - ing matters such as: • inventions; • trade marks; • opposition issues; • invalidation and infringement actions; • counterfeit issues; and • trade secrets. Changes introduced by the FLPIP The most notable differences between the FLPIP and the previous law with regard to trade secrets can be summarised as follows. Besides the definition of “trade secret” men- tioned in Article 163, Article 165 of the FLPIP now states that the party that has legal control over a trade secret is the only party that can transmit such trade secret to or authorise its use by a third party. According to the FLPIP, a party must now prove that it has legal control over the information that is part of a trade secret in order
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