In an increasingly competitive and globalized market, protecting strategic information and a company's know-how is essential. In this context, trade secrets have become a key tool for safeguarding a company's competitive advantage.
In this article, we explain what trade secrets are, their close relationship to patents, how they are protected, and where they are regulated.
What is a trade secret?
Un trade secret It is any type of information, knowledge or know-how of any nature (financial, strategic, R&D, marketing, organizational, among others) that meets the requirements established in the Trade Secrets Law (Law 1/2019, of February 20), which are:
- Secret character: The information must not be known or easily accessible.
- Business value: It must provide a competitive or economic advantage over third parties, whether current or potential.
- Reasonable measures of protection: The owner must implement appropriate and reasonable actions to safeguard confidentiality, taking into account the specific circumstances of each case.
Trade Secrets and Patents: Alternative and Complementary Protections.
The protection of an invention can be addressed through different legal mechanisms, the most notable being: license and the trade secret. These protections can be used in a alternative o complementary, depending on the protection strategy adopted by the company.
In many cases, protecting an invention through both figures may be advisable. For example, before filing a patent applicationIt is essential to keep technical information related to the invention confidential, as its disclosure could jeopardize the novelty requirement for obtaining a patent. To avoid this risk, trade secret protection can be used.
Once the patent application has been filedThere may be additional information that, while not part of the patent, constitutes valuable know-how, such as usage techniques, improvement processes, or recommendations for obtaining optimal results. This information can also be protected by trade secrets, which broadens the scope of protection.
In other cases, the figures of Trade secret and patent can be considered alternatives, which makes it necessary to analyze their main characteristics before choosing one or the other.
Registration and cost
There is no official registration process for the protection of trade secrets, so there are no official fees associated with them. However, it is essential. generate evidence to prove its existence and demonstrate the implementation of reasonable measures to maintain its confidentiality, according to the Law 1/2019 on Trade Secrets.
Patent protection requires a formal registration procedure, which must be completed in each territory where protection is sought.
Advertising and confidentiality
El trade secret is exclusively protected as long as its confidentiality is maintained. It has no defined time limit, so it can be kept indefinitely, as long as it is not disclosed. If it is published, intentionally or accidentally, it loses its confidentiality and, with it, its legal protection.
La license grants a exclusive exploitation right for a period of twenty years, in exchange for your public disclosureThis information can be accessed by third parties and, once the protection period has expired, can be freely used.
Type of protection and test
El trade secret does not grant a jus prohibindi. The protection is limited to cases of unlawful acquisition, use or disclosureTo prove its existence and protection, it is necessary to comply with the legal requirements and provide evidence to prove this.
La license yes grants a sole right This prevents exploitation by third parties during its validity. Its existence and content are supported by the corresponding official registration, which facilitates its proof and legal defense.
Transmissibility
Both the trade secret and license are intangible assets that can be transferred or licensed to third parties.
The decision to protect an invention through trade secret protection, patent protection, or a combination of both will depend on multiple factors, such as the nature of the invention, its life cycle, the ease of maintaining confidentiality, the business strategy, and the competitive environment. An appropriate combination can offer stronger and more lasting protection, maximizing the strategic value of the company's intangible assets..
How to protect a trade secret
Proper management of intangible assets is essential, especially with regard to trade secrets. To protect them, the owner must adopt an active and committed attitude. This attitude is manifested in two key aspects: the protection of information or knowledge and the design of a clear internal strategy.
The protection of secrecy requires that the rights holder identify y plasmas carefully all information or knowledge that could be a trade secret, classify y apply reasonable measures so that the information is secret.
And finally, it is necessary avoid infringing rights on the trade secrets of third parties through a good due diligencea.
Regulation of trade secrets
At European level, trade secrets are regulated mainly in the Directive (EU) 2016/943 of the European Parliament and of the Council, of June 8, relating to the Protection of undisclosed know-how and business information (trade secrets) against unlawful acquisition, use and disclosures (hereinafter, "the Directive"). The Directive aims, in addition to harmonizing the various EU laws, to have a deterrent effect on all conduct constituting unfair competition, provided that the trade secret holder has duly protected his trade secret and can prove it.
Furthermore, the Directive defines trade secrets in a very broad sense, including both commercial and technical information, and defines the concepts of obtaining, using, and disclosing trade secrets, dedicating a chapter to exceptions and establishing a series of rules to ensure the availability of civil actions against infringements.
At the national level, following the transposition of the Directive into Spanish law, trade secrets in Spain are regulated by Law 1/2019, of February 20, 2019, on Trade Secrets.
En elzaburu, we offer specialized services in the implementation of plans for the identification, protection, management and enhancement of business secrets.
We conduct due diligence of trade secrets, we carried out valuations, and we advise on licenses and agreements related to these intangible assets. In addition, we accompany our clients in the pre-litigation and litigation activity linked to defense and protection of its trade secrets, guaranteeing comprehensive and strategic protection of your confidential information.
Cristina Espín, Senior Associate in the Legal, Business and Contracts area at Elzaburu
