Legislative Decree no. 63 of 11 May 2018

implementing the EU Directive no. 2016/943 of the European Parliament and of the Council of 8 June 2016 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure.

Art. 1

Amendment to article 1 of the Legislative Decree no. 30 of 10 February 2005

1. The wording “confidential business information” of article 1, paragraph 1, of the Industrial Property Code, provided for in the Legislative Decree no. 30 of 10 February 2005, is replaced by the following: “trade secrets”.

Art. 2

Amendment to article 2 of the Legislative Decree no. 30 of 10 February 2005

1. The wording “confidential business information” of article 2, paragraph 4, of the Industrial Property Code is replaced by the following: “trade secrets”.

Art. 3

Amendment to the heading of Section VII of Chapter II and to article 98 of the Legislative Decree no. 30 of 10 February 2005

1. The heading of Section VII of Chapter II of the Industrial Property Code is replaced by the following: “Trade secrets”.
2. Paragraph 1 of article 98 of the Industrial Property Code is replaced by the following:

“1. Trade Secrets are granted protection. Trade secrets shall mean corporate data and technological-industrial know-how, including business information, when subject to the holder’s legitimate control and when such data and know-how are:

1. secret in the sense that they are not, as a whole or in their precise arrangement or combination, generally known among or easily accessible to specialists and to workers in the field;
2. they have an economic value because they are secret;
3. they have been subject to measures deemed reasonably adequate, by the person who exerts legitimate control over such data and know-how, to keep them secret.”.

Art. 4

Amendments to article 99 of the Legislative Decree no. 30 of 10 February 2005

1. Article 99 of the Industrial Property Code is amended as follows:

1. Paragraph 1 is replaced by the following:

“Without prejudice to the laws on unfair competition, the legitimate holder of trade secrets ex article 98 has the right to prevent third parties, except when his consent is granted, to unlawfully acquire, disclose or use such secrets, unless they have been independently acquired by the third party.”;

1. After paragraph 1, the following paragraphs are added:

“1 bis. The acquisition, use or disclosure of trade secrets ex article 98 shall also be considered unlawful whenever a person, at the time of the acquisition, use or disclosure, knew or ought, under the circumstances, to have known that the trade secrets had been obtained directly or indirectly from another person who was using or disclosing the trade secrets unlawfully within the meaning of paragraph 1.

1 ter. The production, offering or placing on the market of infringing goods, or the importation, export or storage of the same goods shall also be considered an unlawful use of trade secrets ex article 98 where the person carrying out such activities knew, or ought, under the circumstances, to have known that the trade secrets were used unlawfully within the meaning of paragraph 1. Infringing goods shall mean goods, the design, characteristics, functioning, production process or marketing of which significantly benefits from trade secrets unlawfully acquired, used or disclosed.

1 quarter. The time limitation for the rights and actions arising out of the unlawful conducts provided for in paragraphs 1, 1 bis and 1 ter shall expire after 5 years.”.

Art. 5

Provisions for the preservation of confidentiality of trade secrets in the course of legal proceedings

1. After article 121 bis of the Industrial Property Code, the following is added:

“art. 121 ter (Preservation of confidentiality of trade secrets in the course of legal proceedings)

1. In legal proceedings relating to the unlawful acquisition, use or disclosure of trade secrets ex article 98, the judge may prevent the people he appointed or delegated, the parties and their representatives and consultants, the lawyers, the administrative personnel, the witnesses and any other person having, in any capacity, access to court orders, deeds and documents included in the Court dossier, from using or disclosing the trade secrets subject-matter of the proceedings which the judge shall consider classified. The prohibition referred to in the first sentence shall be taken at the request of a party and shall remain effective also after the proceedings in which the measure has been issues is closed.
2. The prohibition referred to in paragraph 1 shall cease to be effective:
3. where a final decision shall ensure that the trade secrets subject matter of the proceedings did not meet the requirements set forth in article 98;
4. where the trade secrets become generally known or easily accessible to the experts or to the workers in the field.
5. In the legal proceedings referred to in paragraph 1 the judge, at the request of a party, may take any measure which, in accordance with the principle of fair trial, is adequate for preserving the confidentiality of the trade secrets subject matter of the proceedings, and particularly the following:
6. to restrict access to the hearings and to the documents included in the Court dossier to a limited number of persons;
7. to order that a non-confidential version of any judicial decision issued in the proceedings referred to in paragraph 1, in which the passages containing trade secrets have been censored or omitted, is made available to persons other than the parties.
8. For the purposes of paragraph 3, letter b), by the final decision the judge shall indicate the parts of the decision that the court clerk must censor or omit when issuing a copy of the decision to persons other than the parties. For the same purposes the judge shall order that a note which shows the prohibition to circulate the full version of the decision is entered by the Registrar at the time of the filing of the decision.”.

Art. 6

Amendments to article 124 of the Legislative Decree no. 30 of 10 February 2005

1. After paragraph 6 of article 124 of the Industrial Property Code the following paragraphs are added:

“6 bis. In legal proceedings relating to the unlawful acquisition, use or disclosure of trade secrets ex article 98, the judge in ordering the measures provided for in this article and in assessing the proportionality of such measures shall be required to take into account the specific circumstances of the case, including, where appropriate:

1. the value and other specific features of the trade secrets;
2. the measures taken by the legitimate holder to protect the trade secrets;
3. the conduct of the infringer in acquiring, using or disclosing the trade secrets;
4. the impact of the unlawful use or disclosure of the trade secrets;
5. the legitimate interests of the parties and the impact which the granting or rejection of the measures could have on the parties;
6. the legitimate interests of third parties;
7. the public interest;
8. the safeguard of fundamental rights.

6 ter. In legal proceedings relating to the unlawful acquisition, use or disclosure of trade secrets ex article 98, the judge may order monetary compensation to be paid, instead of applying the measures provided for in this article, at the request of the interested party, if all the following conditions are met:

1. the person concerned at the time of use or disclosure neither knew nor ought, under the circumstances, to have known that the trade secrets were obtained from another person who was using or disclosing the trade secrets unlawfully;
2. execution of the measures in question would cause that person disproportionate harm;
3. monetary compensation appears reasonably satisfactory with respect to the damage suffered by the party who requested the measures.

6 quarter. The monetary compensation ordered pursuant to paragraph 6 ter shall not exceed the amount of royalties or fees which would have been due, had that person requested authorization to use the trade secrets in question, for the period of time for which use of the trade secrets could have been prohibited.”.

Art. 7

Amendments to article 126 of the Legislative Decree no. 30 of 10 February 2005

1. Article 126 of the Industrial Property Code is amended as follows:

1. The following sentence is added to paragraph 1: “In any event measures adequate to preserve the confidentiality of trade secrets ex article 98 shall be implemented.”;
2. After paragraph 1, the following paragraphs are added:

“1 bis. In legal proceedings relating to the unlawful acquisition, use or disclosure of trade secrets ex article 98, the judge in deciding whether to grant the measures provided for in paragraph 1 and in assessing the proportionality of such measures shall be required to take into account the specific circumstances of the case, including, where appropriate:

1. the value of the trade secrets;
2. the conduct of the infringer in acquiring, using or disclosing the trade secrets;
3. the impact of the unlawful use or disclosure of the trade secrets;
4. the danger of further unlawful use or disclosure of the trade secrets by the infringer.

1 ter. For the purposes of paragraph 1 bis the judge shall also consider whether the information on the infringer are such that the person can be identified and, in such case, whether the publishing of such information is justified considering the possible damages that the measure can cause to the personal life and reputation of the infringer.”.

Art. 8

Amendments to article 132 of the Legislative Decree no. 30 of 10 February 2005

1. After paragraph 5 of article 132 of the Industrial Property Code the following paragraphs are added:

“5 bis. In all precautionary proceedings relating to the unlawful acquisition, use or disclosure of trade secrets ex article 98, the judge may, at the request of a party, as an alternative to the precautionary measures, make the continuation of the alleged unlawful use of a trade secret subject to the lodging of guarantees intended to ensure the possible compensation of the trade secret holder. Disclosure of the trade secrets of which the continuation of use is authorized pursuant to the first sentence hereto shall not be allowed.

5 ter In deciding on the precautionary claims relating to the unlawful acquisition, use or disclosure of trade secrets ex article 98, the judge shall be required to take into account the circumstances set forth in article 124, paragraph 6. The judge shall take into account the same circumstances when assessing the proportionality of such measures.

5 quarter. Without prejudice to paragraph 4, when the precautionary measures taken to protect trade secrets ex article 98 shall become ineffective pursuant to paragraph 3 by reason of failure to initiate a proceeding on the merits within the mandatory date provided for in paragraph 2 or by reason of an act or an omission by the claimant or by reason of a later assessment that the unlawful acquisition, use or disclosure of such trade secrets had not occurred, then the claimant must pay compensation for damages caused by the precautionary measures.”.

Art. 9

Amendments to the Criminal Code with regard to the willful failure to comply with a judicial order and with regard to the disclosure of scientific and industrial secrets

1. Article 388 of the Criminal Code is amended as follows:

1. After paragraph 2, the following paragraphs are added:

“The same penalty applies to who evades a judicial order that prescribes prohibitory or remedial measures to protect intellectual property rights.

The same penalty provided for in paragraph 1 also applies to whoever, being forced to confidentiality by an express judicial order issued in proceedings relating to intellectual property rights, violates such order.

1. The wording “paragraph 5” of paragraph 8 is replaced by the following: “paragraph 7″.”.

1. Article 623 of the Criminal Code is replaced by the following:

“Art. 623 (Disclosure of scientific and commercial secrets) – Whoever, having known trade secrets or information intended to remain secret on scientific discoveries or inventions by reason of its capacity or office, or profession or art, discloses or uses such secrets or information for his own or for someone else’s profit is punished with imprisonment up to two years.

The same penalty applies to whoever, having unlawfully acquired the trade secrets, discloses or uses such secrets for his own or for someone else’s profit.

The penalty is increased in case the conduct is carried out with the use of any IT tool.

The liable party is punished upon complaint by the aggrieved party.”.

1. For the purposes of article 623 of the Criminal Code, in the amended text provided for in this article, the information intended to remain secret on industrial applications according to the previous version of such article 623 shall represent trade secrets.”.

Art. 10

Financial clause

1. No new or greater costs for public finance shall arise from the implementation of this Legislative Decree. The administrative bodies responsible for the implementation of such Legislative Decree shall provide for within the limits of the human, financial and instrumental resources available according to the existing legislation.