Industrial secret and protection of know-how

Know-how, understood as the patrimony of technical and practical knowledge, characterized by the requirements of secrecy and originality, suitable for optimizing industrial production processes but not patented or in any case unsuitable for being patented, as they do not consist of specifically identifiable industrial results., appears to have increasing importance in the economic and industrial world.

As such, it allows its holder to have a competitive advantage in a given economic context and can be the subject of transfer or license agreements, possibly included in more complex economic operations, in which the transmission of knowledge corresponds to the payment of a corresponding.

In order to strengthen its protection, as known, it was published in the Official Gazette general series no. 130 of 7 June 2018 the Legislative Decree of 11 May 2018, n. 63 issued in implementation of the directive (EU) 2016/943 of the European Parliament and of the Council, of 8 June 2016, on the protection of confidential know-how and confidential commercial information (trade secrets) against the acquisition, use and illegal disclosure.

The rule of law now provides greater emphasis on criminal and administrative sanctions, as well as precautionary and compensatory remedies also in consideration of the moral prejudice suffered, as well as the issue of seizure and confiscation, the possibility of destruction and withdrawal from the market in the event of an investigation judicial review of the unlawful use.

The provision replaces the notion of "confidential company information" with that of "commercial secrets", also placing the emphasis on negligent conduct not taken into consideration in the past but which now require particular attention given that their prediction is seen as a valid tool to reduce the risk of spreading illegal practices.

Upon request by one of the parties, the decree admits the possibility of adopting an alternative route to that of precautionary measures, such as the payment of compensation which must always be adequate in relation to the damage suffered by the party requesting it. In particular, the indemnified amount must not exceed what should have been paid for the legitimate use of the property subject to trade secret.

It provides for an integration of the art. 388 criminal code capable of sanctioning the conduct of circumventing the execution of an inhibition or correction provision issued by the judge to protect industrial property rights or whoever transgresses the order of confidentiality is liable for the crime of willful non-execution of a judge's provision.

Not only that, the decree provides for a new formulation of the art. 623 of the Criminal Code, which punishes the conduct of those who acquire trade secrets illegally to resell them or use them for their own benefit or for the benefit of others.

The criminal provision increases the penalty if the fact is committed through IT tools, thus putting a brake on the dangerous conduct committed by individuals particularly skilled with IT means.

The Italian Supreme Court - in a recent decision - reiterated that the object of the criminal protection guaranteed by art. 623 criminal code it is the "industrial secret" understood in a broad sense, i.e. a set of confidential knowledge and particular modus operandi capable of guaranteeing the reduction of design and construction errors to a minimum and therefore the compression of production times.

With sentence no. 16975/2020 on the subject of crimes against the inviolability of secrets, the Court also recalled that - for the criminal case to take place - it is not necessary that the conditions exist for the patentability of the discovery or of the revealed application.

In summary, the company know-how is protected by the law, falling within the notion of "industrial application" (completely comparable to the concept of "trade secret"), which as such includes all the innovations and expedients that contribute to the improvement of production, although such knowledge lacks the requisites required for it to be patented.

Furthermore, the economic value of the know-how must be parameterized to the amount of the investments made, both in terms of lower future costs and of the greater attractiveness of the products thus created.

Protection is therefore envisaged in favor of a technique or a practice or even of information, and, in summary, of a company's wealth of knowledge, obtained through experience and research carried out over the years, as such capable of a firm a competitive advantage and an expectation of greater economic profit.