A Trade Secret is any information or knowledge that is secret (i.e. that is not known or accessible to persons in the sector), has a business value, by virtue of being secret, and reasonable measures have been taken by its owner (Act 1/2019 of 20 February, on Trade Secrets).
A Trade Secret protects its holder against the unlawful acquisition, use or disclosure of the information constituting the secret.
The secrecy holder is the natural or legal person who legitimately exercises control over the secrecy and must provide documentary or material evidence of its existence, as well as of the effective measures he or she has put in place to maintain secrecy. These measures must include, in particular
● Confidentiality agreements with third parties; inclusion of clauses in employment contracts relating to confidentiality, assignment of rights and non-competition.
● Restriction of access to information to a limited number of authorised persons.
Trade Secrets are legally regulated and, unlike Patents, can offer protection without any time limitation. No registration is required and therefore there are no costs for the prosecution and defence of registrations. Therefore, the costs for obtaining and maintaining them are significantly lower than those of a Patent.
However, it should be borne in mind that Trade Secret protection will lose its effectiveness if there is a disclosure of the protected subject matter. Moreover, in such a case it would be too late to protect the innovation by Patents or Utility Models, as these would not be valid due to lack of novelty. The option of a Trade Secret is only advisable when there is a possibility to keep the innovation secret over time with a very high degree of confidence.
Patents and Trade Secrets are not mutually exclusive forms of protection but can be complementary. There are innovations, or parts thereof, which cannot be protected as Patents because they do not meet some of the requirements for patentability (technical character of the invention, inventive step, industrial application) or because they are directly excluded from patentability due to their very nature (e.g. computer programs as such, methods for the exercise of economic and commercial activities, mathematical methods when they are not applied to a specific technical realisation, and certain activities in the fields of biotechnology and medicine). In these cases, Trade Secrets may be useful.
On the other hand, even in the case of a patented invention, there may be certain Know-How that only the inventor possesses, and which could be included in the licensing contract for the exploitation of the Patent. This Know-How could be protected as a Trade Secret, if it is not indispensable for putting the patented invention into practice, in which case it must be disclosed in the Patent application.