We are all aware that regardless of the protection that may be obtained for certain knowledge through registering it as a patent, there is other types which are either not patentable ‘per se’ or its registration as a patent does not interest the owner for different reasons. This would be the case, for example (and among others) of so-called ‘know-how’.
There is no clear description of industrial secrets in domestic legislation, although what is established in the “agreement on trade-related aspects of intellectual property rights”, which in Appendix 1C, Section 7, article 39, deals with that referred to as ‘protection of undisclosed information’, can be considered a start.
Section 1 of the aforementioned article establishes that to ensure effective protection against unfair competition, Member States (including Spain) will protect undisclosed information. We see, as a premise, that the protection of undisclosed information falls within the field of unfair competition.
Section 2 of article 39 defines what is meant by undisclosed information or industrial secrets by establishing that natural and legal persons shall have the possibility of preventing information lawfully within their control from being disclosed to, acquired by, or used by others without their consent in a manner contrary to honest commercial practices.
These are practices such as breach of contract, breach of confidence and inducement to infringe, including the acquisition of undisclosed information by third parties who knew, or were grossly negligent in failing to know, that such practices were involved in the acquisition, etc… and providing that the information in question fulfils the following requisites:
- it is secret in the sense that it is not generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question
- it has commercial value because it is secret; and
- it has been subject to reasonable steps, by the person lawfully in control of the information, to keep it secret.
If any of these characteristics is not fulfilled an industrial secret worthy of legal protection cannot be considered to exist.
As a result, to be able to claim legal protection for these industrial secrets, the owner first has to determine whether it is a secret in the sense that it is not generally known among or readily accessible to persons within the commercial or industrial sector that normally deal with the kind of information in question.
This industrial secret also has to have (since it is secret), a commercial value, and its owner must adopt all the necessary measures to maintain its confidentiality.
In this sense, internal measures must also be adopted for employees and persons within the organisation for its confidentiality to be maintained and for such persons with knowledge of the industrial secret to be aware that it is effectively an industrial secret.
In doing so, we understand that it is essential to expressly mark this information with a reference to its special and secret nature, with the use of expressions such as ‘CONFIDENTIAL’ and ‘NOT TO BE DISCLOSED’, etc., and at the same time, make the employees and collaborators who have access to it for work reasons sign confidentiality agreements obliging them to maintain the confidentiality of any information the company or holder considers to be undisclosed and secret.
Similarly, sign confidentiality agreements or contracts with all external collaborators, suppliers and clients who are provided data or information considered to be an industrial secret.