Italian law considers trade secrets from different perspectives. Trade secrets, i.e. information meeting the requirements set by Art. 98 - 99 of the Intellectual Property Code, are proper Intellectual Property rights and, as such, benefit from the relevant judiciary relief. Additionally, trade secrets may be protected through unfair competition (Art. 2598 of the Civil Code) (which protect trade secrets and non-secret know how). Moreover, the employees' duty of loyalty and confidentiality must be considered (Art. 2105 of the Civil Code). Finally, the criminal relief set forth by Art. 621 - 623 of the Criminal Code and contractual provisions agreed between the parties may be relevant. In the light of the above, the Italian system has traditionally been considered quite advanced in this regard. Therefore, the Italian legislator decided to implement the Trade Secrets Directive (TSD) only partially, by amending some articles of the Intellectual Property Code and of the Criminal Code.
Stage of legislative process
On May 11, 2018 the President of the Italian Republic approved the law implementing the TSD issued by the Italian Government. The law – named Legislative Decree n. 63 of May 11, 2018 – was published in the Italian Official Journal on June 7, 2018.
Timescale for implementation
The new rules set by the Legislative Decree n. 63 of May 11, 2018 came into effect on June 22, 2018 (i.e. 15 days after the publication of the law on the Italian Official Journal).
Noteworthy points arising from the legislative changes
The unauthorised acquisition, use or disclosure of trade secrets performed with slight negligence can be considered unlawful.
Italian Courts may, as an alternative to provisional and precautionary measures, make the continuation of the alleged unlawful use - but not the disclosure - of trade secrets subject to the lodging of guarantees intended to ensure the compensation of the trade secrets holder.
Where provisional and precautionary measures are granted, but it is subsequently found that there has been no unlawful acquisition, use or disclosure of trade secrets or threat of such conduct, Italian Courts may order the trade secrets holder - upon the request of the respondent or of an injured third party - to pay appropriate compensation for any injury caused by those measures.
The limitation period for contractual claims and actions connected to unauthorised acquisition, use or disclosure of trade secrets has been reduced to five years.
The criminal penalties for the unauthorised acquisition, use or disclosure of trade secrets can be increased by up to one third if the behavior is performed with any IT equipment.
Non-compliance with Italian Courts' decisions concerning Intellectual Property rights (not just trade secrets) or with the confidentiality rules set forth during civil proceedings concerning trade secrets can be considered crimes.
The Italian legislator deemed it unnecessary to implement the TSD rules concerning whistleblowers because a specific Law (n. 179/2017) has already come into force.
