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  • Intellectual property framework

    Overview

    Protection of intellectual property rights is required by the Federal Constitution and by several multilateral treaties. The main statutes in this area are federal statutes. However, in case of litigation, some matters are subject to federal jurisdiction, and others to provincial jurisdiction.

  • Commercial contract framework

    Overview

    Commercial contracts are governed by the Civil and Commercial Code. This code came into effect in 2015 and it replaces the previous separate Civil Code and Commercial Code. It is part of the federal legislation, but jurisdiction regarding its implementation and litigation resulting thereunder corresponds primarily to the provincial courts.

    The Civil and Commercial Code includes general provisions on contracts, which are applicable to all contractual transactions. These provisions govern matters such as the formation of contracts, offer and acceptance, possible subject matter of contracts, legal formalities, the legal effects of contracts, contract termination and others.

    In addition, the Civil and Commercial Code includes provisions applicable to specific types of contracts, such as sale agreements, leases, franchise agreements and agency agreements. More than 30 types of agreements are subject to specific provisions of this kind. These specially regulated agreements are thus subject to the general rules applicable to contracts –described above – and to the special rules applicable to the relevant type of agreement. Agreements that are not subject to special rules are nevertheless valid, and they are governed primarily by the general contract rules and – to the degree possible – by the rules applicable to analogous specially regulated contracts.

    Other laws include provisions on specific types of commercial contracts. For instance, the Copyright Law includes certain provisions of contracts related to software and to publishing; the Patent Law includes rules on license agreements; and the Insurance Law includes rules on insurance contracts. However, in all these specially regulated contracts, the general contract law rules included in the Civil and Commercial Code are also applicable.

    Commercial contracts with the federal or provincial governments or with other governmental entities are also governed by administrative law. Special rules on contracts with state entities have been included in federal or provincial laws, or have been developed by case law.

  • Copyrights

    Nature of right

    Copyright protects intellectual creations in all fields of science, art and literature. Article 1 of the Copyright Law includes a non-exhaustive list of possible intellectual works protected by copyright. These include, among others, literary and artistic works, music, architectural works and software.

    Copyright protects intellectual expressions, but not ideas. For example, the contents of a book in terms of sentences and other literary expressions are protected by copyright, but the creative idea underlying the book as a whole is not.

    Copyright results from the creation of an intellectual work. Registration is not necessary for copyright to exist, although it is necessary for the exercise of some rights by local authors. Upon creation of a protected work, copyright belongs to the original author or authors, who then may transfer their right, by contract or by the operation of certain legal rules.

    Copyright includes economic and moral rights. Economic rights consist, basically, in the exclusive right to use and exploit the protected work. The Copyright Law lists some of the elements of this exclusive right, such as the right to reproduce the relevant work, to market copies, to prepare derivative works or to have the work performed publicly.

    Moral rights include the so call "integrity right" – that is, the right to preserve the text, title and other contents of the work, even if property rights on such work have been assigned; the "paternity right," the author’s right to be named and identified as such together with the work; the "publication right," the right to decide whether the right will be published; and the "alteration right," the right to modify the work, even after it has been published. Moral rights belong to the author and they are generally non-assignable.

    Legal framework

    Copyright law is included in Law 11, 723, as amended. In addition, multiple laws and regulations govern matters such as related rights, publishers' rights and collective management societies.

    Argentina is part of the main multilateral international copyright agreements, such as the Trips Agreement, the Berne Convention and the Rome Convention. The provisions of these agreements are actively enforced by the courts.

    Duration of right

    The general rule is that copyright protection lasts for a term of seventy years, counted as of January 1 of the first year after the death of the author, as well as through the life of the author.

    In the case of work done through cooperation, the 70-year term is computed from the death of the last person who participated in the joint authorship of the work involved.

    In the case of posthumous works, the 70-year term is computed from the death of the author.

    The duration of protection of anonymous works whose copyright belongs to institutions, corporations or legal entities is 50 years from the date of publication of the work.

    Special rules on copyright duration apply to specific types of copyrightable works, such as photographs and cinematographic works.

    Ownership / licenses

    The basic rule is that ownership belongs to the author. Special rules have been developed in connection with special types of works, such as cinematographic works, derivative works and software.

    There are several types of joint ownership. It may apply to works done through cooperation, which imply a creative collaboration between different authors; to collective works, which are those created through the initiative or direction of one or more individuals, who coordinate or direct the efforts of several other individuals to achieve a joint result; and to composite works, which are the result of adding different separate works, each with a possible separate author and owner, into one final result.

    Works created by employees who have been hired for that purpose belong to the employer.

    Copyright may be subject to licenses, generally as part of broader contractual arrangements such as publishing agreements.

    Remedies for infringement

    Damages may be claimed before civil courts for all types of copyright violation. Registration of works is not necessary, except for local authors, whose rights may be suspended until registration takes place.

    It is also possible to file civil action to prevent further copyright violation, and to obtain preliminary remedies, such as injunction, in the course of civil procedures.

    Criminal remedies, particularly fines, are possible, but are not frequently applied.

  • Mask works / topographies

    Nature of right

    Mask works and topographies are not separately protected under Argentine law. They may be protected under patent law or by way of confidentiality.

    Legal framework

    Argentina has enacted no specific rules on chip protection. Although Argentina is part of the WTO and has approved the Trips Agreement, it has not yet implemented any rules on chip protection.

    The provisions on chip protection included in the Trips Agreement have not been deemed immediately applicable under Argentine law. In addition, Argentina has not ratified or implemented other multilateral treaties on chip protection, in particular the Treaty of Washington of 1989.

    Semiconductor technology, generally, and topographies, in particular, may be protected under the traditional intellectual property rules applicable to all types of technology, specially patent law and the rules on confidential information. Therefore, matters such as the duration of the relevant rights, ownership and remedies depend on the type of protection used in connection with each specific mask work or topography.

    Duration of right

    Not applicable for this jurisdiction.

    Ownership / licenses

     Not applicable for this jurisdiction.

    Remedies for infringement

    Not applicable for this jurisdiction.

  • Patents

    Nature of right

    Patents are a statutory right. The granting of patents is required by the Argentine Constitution and by different international documents, particularly the Trips Agreement. Patent rights imply an exclusive right to exploit a process or a product. The Argentine Patent Law defines the limits of these exclusive rights, on the basis of the provisions of the Trips Agreement.

    Legal framework

    Patents are governed by the Patent Law – Law 24,481, as amended. In addition, they are governed by the Trips Agreement and by the Paris Convention. Argentina is not a party to the Patent Cooperation Treaty.

    Duration of right

    The basic rule is that patents expire 20 years after the date in which the relevant patent application was filed. Argentina uses a "first to file" system, but it also applies the priority rules derived from the Paris Convention.

    Argentine law provides special rules on compulsory licenses and on patent termination due to lack of exploitation of the patented invention. Compulsory licenses may be granted in case of non-exploitation, competition law violations or sanitary emergencies, among other cases. Patent termination may result when, after a compulsory license was granted for lack of exploitation, no exploitation of the invention takes place for two years after the license was granted.

    Ownership / licenses

    Joint ownership is permissible. The Patent Law includes provisions on the exercise of patent rights by the joint owners. In addition the Civil and Commercial Code rules on joint property apply to patents.

    The Patent law includes rules on licenses. Licenses are not exclusive, unless the parties provide otherwise. Competition law rules are applicable to restrictive clauses included in license agreements.

    Remedies for infringement

    The Patent law provides both civil and criminal law remedies for cases of infringement.

    Civil remedies include the compensation of damages and termination of the infringing activities.

    A complex system of rules for preliminary remedies in patent cases is included in the Patent law. Generally, suspension of an alleged infringer's exploitation requires a preliminary procedure, with the participation of expert witnesses.

    Criminal procedures and sanctions are rare.

  • Trademarks

    Nature of right

    A trademark may consist of one or more words, with or without conceptual content, drawings, commercial symbols, monograms, engravings, prints, seals, images, stripes, color combinations, letter and number combinations, the special graphics of letters and numbers, advertisement phrases, reliefs, and any other sign with distinctive capacity.

    A trademark is normally protected by means of its registration. However, de facto trademarks, that is those that are used but not registered, are also protected in a more limited way.

    Legal framework

    Trademarks are governed by the Trademark Law – Law 22,362, as amended.

    In addition, trademarks are protected by the rules included in Trips Agreement and in the Paris Convention.

    Duration of right

    Registered trademarks are protected for a period of ten years, from the moment of registration. Trademark registration may be renewed indefinitely.

    Registration may be cancelled for lack of use during a period of five years. In addition, renewal of registration requires proof of the trademark's prior use.

    Ownership / licenses

    Ownership is acquired by means of registration. However, use of unregistered trademarks may result in certain rights for the user.

    Trademarks may be subject to joint ownership. The Trademark Law and the Civil and Commercial Code provide the rules applicable to these joint ownership relationships.

    Trademark licenses are possible. They are valid even if they are not registered with the trademark office.

    Remedies for infringement

    The Trademark Law provides both civil and criminal law remedies for cases of infringement.

    Civil remedies include the compensation of damages and the termination of the infringing activities.

    Special preliminary remedies are applicable in cases of trademark infringement. The trademark owner may obtain an injunction against the infringer, when the trademark is registered and its violation is immediately evident.

    Criminal law remedies are rarely used in practice.

  • Trade secrets

    Nature of right

    Argentine law provides protection for trade secrets and confidential information. A complex set of rules creates rights against conduct whereby access is gained illegally to confidential information, or which implies illegal use of trade secrets or confidential information or which results in the unauthorized and harmful disclosure of confidential or secret information.

    Confidential information is characterized by the fact that it is kept in a reserved manner and that it is not generally available for technicians working in the relevant technical field. Trade secrets receive a special degree of protection, particularly under criminal law.

    Legal framework

    Confidential information is governed and protected by Law 24,766. It is also protected by the Trips Agreement and by the Paris Convention.

    In addition, multiple rules and statutes protect confidential information and trade secrets. Labor law protects the confidentiality and ownership of information used in employment relationships.

    Several criminal law rules apply to special types of violations of confidentiality. In particular, disclosure of trade secrets and unfair competition by means of the illegal use or appropriation of trade secrets are subject to criminal law penalties.

    Duration of right

    Confidential information and trade secrets is protected for as long as the relevant information is kept confidential. The degree of protection diminishes if the information ceases to be objectively a secret, due to its previous disclosure or because it has been obtained independently by other parties.

    Ownership / licenses

    Ownership results from the obtention of the information, accompanied by legal or practical measures aimed at restricting access to that information by third parties. No registration requirement is applicable.

    Joint ownership is possible.

    Trade secret or know-how licenses are common and enforceable.

    Remedies for infringement

    Argentine law provides civil and criminal law remedies for cases of trade secret infringement.

    Damages caused by these violations must be compensated. It is also possible to obtain court orders requiring termination of the violation.

    Preliminary remedies include injunctions against further exploitation or disclosure of trade secrets.

    Criminal remedies are applicable in cases of disclosure of trade secrets acquired in the course of employment and other professional relationship, as well as in cases in which the violation of the rights to confidential information or trade secrets results in unfair competition.

  • Other key IP rights

    Nature of right

    Industrial designs

    Industrial models and designs are protected by special industrial property rights. An industrial model or design consists in the forms embodied in or the aspect applied to an industrial or artisan product, which confer an ornamental character to such product.

    Exclusive rights on industrial models and designs result from registration of the relevant model or design.

    Industrial designs

    Industrial designs

    Legal framework

    Industrial designs

    Industrial models and designs are protected by Decree 6673/1963, as amended. They are also protected in accordance with the Trips Agreement and the Paris Convention.

    Duration of right

    Industrial designs

    The rights derived from the registration of an industrial model or design last for a five-year period, counted from the date of filing of the relevant application. The registration may be renewed for two successive five-year period, if the owner requests such renewal.

    Ownership / licenses

    Industrial designs

    Ownership belongs to the author. There is a rebuttable presumption to the effect that the first applicant of an industrial model or design registration is the author of such industrial model or design. Joint ownership is possible, and is governed by the Civil and Commercial Code and by Decree 6673/1963 as amended.

    Industrial models or designs may be the subject matter of license agreements. No registration is necessary for the validity of these agreements.

    Remedies for infringement

    Industrial designs

    Civil and criminal law remedies are applicable in case of infringement. Civil remedies include the compensation of damages and termination of the violation.

    Preliminary injunctions and remedies are possible in accordance with general procedural rules.

    Criminal sanctions have been recently reinforced, but they are rarely applied.

  • Intellectual property in employment context

    Employees

    Special rules on employee inventions are included in the Patent Law and in the Labor Contract Law.

    There are basically three types of invention, from the perspective of employer-employee relationships. First, inventions made in technological areas for which the employee was hired as a researcher or developer belong to the employer. The employee may be entitled to a special compensation if he or she develops a patented invention which exceeds the normal scope of the employee's work. Second, inventions related to the employee's work or related to the employer's know-how or activities belong to the employee, but allow the employer to exercise an option to acquire rights over the invention. If the option is exercised, the employee is entitled to a payment reflecting the value of the invention. Third, inventions that do not fall into the two previous categories belong to the employee.

    Similar rules are applicable in the case of other types of technology or intellectual property rights. In the case of software, the law applies the “work for hire” doctrine, but allows the parties to agree to different contractual rules.

    Consultants / contractors

    The law is not explicit about the rights of consultants and contractors, who do not qualify as employees, with regard to technology and other intellectual property they develop. Generally, the parties may agree as to the rules which will apply to such rights. In the absence of a contractual framework, the technology or intellectual property generated by a consultant or contractor who was hired with the purpose of developing such items that will belong to the person paying for such work.

  • Key commercial contract considerations

    Registration of commercial agreements

    The general rule is that commercial agreements are not registered, and that their validity and effect is not subject to registration requirements. However, certain types of agreement must be registered to be effective or to have full effects against third parties. Agreements subject to registration include business association agreements, certain publishing agreements, certain chattel mortgages and certain agreements related to real estate. International transfer of technology agreements are subject to registration for tax purposes.

    Recognized language of commercial agreements

    Agreements are generally entered in Spanish. However, it is legally possible to enter agreements written in other languages. These agreements must be translated when presented in court. Spanish language may be necessary in consumer transactions.

    Country-specific issues for online content

    Argentina has ratified the WIPO conventions applicable online content and practices. However, enforcement of these conventions is weak.

    Enforceability of online/clickwrap/shrinkwrap terms

    The general rule is that acceptance of terms included in online, click wrap or shrink wrap elements is valid and effective, provided such acceptance is clearly stated and applies to terms that were known to the person giving the acceptance. However, several rules may limit the effects of agreements entered by these mechanisms, particularly consumer protection rules and rules on adhesion contracts.

    Governing law

    The basic rule is that the parties may agree as to the law that will govern their contractual rights and as to the applicable jurisdiction in case of dispute. This freedom of election is subject to several limitations. Non-Argentine law will not be enforced in Argentine courts if it  is contrary to Argentine public policy. Also, certain matters are necessarily governed by Argentine law. For example, if a business association is created in Argentina, its organization and other corporate aspects will be governed by Argentine law. Decisions made by non-Argentine courts or arbitration tribunals are enforceable in Argentina only after going through a special procedure before the Argentine courts, in the context of which the decision will only be enforced if it complies with certain rules, particularly not violating Argentine public policy. In addition, certain matters – ie, deciding the validity of a patent issued in Argentina – are necessarily subject to Argentine jurisdiction.

  • Key commercial contract terms

    Enforceability of warranty disclaimers

    Argentine law provides certain warranties, generally applicable to all types of contracts implying the transfer of rights. These warranties apply, in particular, to the validity of the rights being transferred and to the fitness of the goods regarding which rights are transferred.

    The general rule is that these warranties may be limited or eliminated by agreement between the parties. However, these disclaimers are totally or partially invalid in several types of cases: if the transferor had prior knowledge of the invalidity of the transferred rights or of the deficiency of the goods involved; if the transferor is a merchant and the parties waiving his or her rights are not; and if the warranty disclaimer is included in a consumer or adhesion contract.

    Enforceability of exclusions/limitations of liability indemnification

    Exclusions or limitations of liability indemnification are valid if they meet the general conditions applicable to contractual. However, they may be unenforceable in the following cases: when they extend to willful violations or defaults, or to violations or defaults resulting from gross negligence; when they are imposed in adhesion or consumer contracts; or when they result in the violation or annulment of rights that may not be removed or limited contractually.

    Indemnification

    The basic rule under Argentine law if full indemnification of economic or moral damages caused by illegal conduct, whether that conduct constitutes a contractual or a tort violation.

    The parties are free to include contractual rules as to the extent of their indemnification obligations.

    Penalty clauses and liquidated damages clauses are acceptable, but they may be limited or amended by the courts if their terms are deemed abusive.

    In the absence of contractual provisions, the indemnification's extent will depend on circumstances such as the willful or negligent nature of the violation, foreseeability of the damages caused and the comparative fault of the parties.

    Electronic signatures

    Electronic signatures are valid and effective under Argentine law. However, certain legal effects require that the signature comply with a special certification regime.

  • Key contacts
    Guillermo Cabanellas
    Guillermo Cabanellas
    Senior Partner DLA Piper (Argentina) [email protected] T +5411 41145500 View bio

Trade secrets

Nature of right

Argentina

Argentine law provides protection for trade secrets and confidential information. A complex set of rules creates rights against conduct whereby access is gained illegally to confidential information, or which implies illegal use of trade secrets or confidential information or which results in the unauthorized and harmful disclosure of confidential or secret information.

Confidential information is characterized by the fact that it is kept in a reserved manner and that it is not generally available for technicians working in the relevant technical field. Trade secrets receive a special degree of protection, particularly under criminal law.

Australia

Trade secrets are treated as "confidential information" and can be protected through a breach of confidence claim.

Such a claim can be brought if:

  • The information can be identified with specificity
  • The information was confidential
  • There was an obligation of confidence on the defendant
  • The defendant used the information without the plaintiff’s consent and to their detriment

Austria

Trade secrets as such are not a recognized intellectual property asset in Austria. Protection of trade secrets is, however, ensured by a number of more general statutory acts.

Belgium

A definition has been inserted into Belgian law as a transposition of Directive 2016/943 of the European Parliament and of the Council on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure gets implemented, by the Act of July 30, 2018. A new Title 8/1 has been inserted in Book XI of the Code of Economic Law in order to implement the main provisions of Directive 2016/943.

The general definition of a trade secret has been transposed from the Directive into article I.17/1 of the Code of Economic Law:

"Trade secret: information which meets all of the following requirements: (a) it is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question; (b) it has commercial value because it is secret; (c) it has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret."

Under Belgian law, a distinction must also be made between so-called "manufacturing secrets" (or secrets de fabrique), of which the illegitimate disclosure by employees and former employees is sanctioned by criminal law (under Section 309 of the Criminal Code), and confidential information in general.

In order to assess whether a third party acts unlawfully, another distinction should be made between disclosure and use of the information, as well as between acts committed in good faith and acts conducted in bad faith.

Brazil

Trade secrets are not protected as property in Brazil. However, the Brazilian Industrial Property Law, in the chapter related to Crimes of Unfair Competition, characterizes as crimes certain conducts involving the unauthorized use of trade secrets. As a result, there is legal protection against the violation of trade secrets.

Canada

A trade secret, or confidential information, is any information that is not publicly available and gives the holder an advantage over others. A trade secret (or know-how) can be any type of information, whether commercial, technical or financial.

Chile

Trade Secrets are defined as any knowledge about industrial products or procedures can be considered as an industrial or business secret, whose maintenance in reserve provides its possessor with an improvement, advance or competitive advantage.

China

The PRC Anti-Unfair Competition Law, which was recently amended and became effective as of April 23, 2019, defines a "trade secret" as technical information, operational information or other commercial information with business value; that is not known to the public; and for which the right holders have taken measures to ensure confidentiality.

It constitutes an infringement of trade secrets to obtain the trade secrets by illegal means and disclose them, use or permit others to use the trade secrets obtained by illegal means or in violation of confidentiality obligations (or to facilitate, instigate or otherwise assist others to do the same).

Colombia

Article 260 of Resolution 486 establishes that a trade secret is any non-disclosed information held by any person (legal or natural) that can be used in any productive, industrial or commercial activity, that can be transmitted to a third party as long as such information has the following features:

  • It is a secret, which means that it is not known or accessible to those who usually handle it
  • It has a commercial value due to its secrecy
  • It is protected by reasonable measures in order to keep it secret

Information disclosed by virtue of a legal provision or by a court order is not considered a trade secret. Information provided to an authority is not considered as such when a person supplies it to obtain license, permit, authorization, registration or any other official enactment.

The Colombian Legal Regime does not determine a specific manner for the transference of the secret protection. For this reason, the owner must take steps to protect secret information in accordance with its features, such as:

  • confidentiality policies
  • training programs for employees
  • limit access to secret information and
  • follow procedures used to maintain information private

Czech Republic

Trade secrets are regarded as technical or operational information that is valuable to the business, not known to the public or in relevant business circles, that confers identifiable competitive value and whose owner ensures in his or her own interest its secrecy.

Denmark

Trade secrets are defined in the Act on Protection of Trade Secrets (LOV 309 25/04/2018), Section 2. The definition of "trade secrets" is information which is secret by nature, has a market value due to the information being secret and which under the specific circumstances are subject to fair measures imposed by the person(s) controlling the information, to maintain the secrecy.

Trade secrets are not considered intellectual property rights in Danish law.

Finland

In Finland, trade secrets are protected under the Trade Secret Act, as well as through criminal law provisions in the Finnish Penal Code on the misappropriation of trade secrets. Employment legislation also includes provisions requiring the employee to refrain from disclosing confidential information of the employer.

France

As defined by EU Directive 2016/943 on Trade Secrets of June 8, 2016, a protectable trade secret is information that:

  • Is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question
  • Has commercial value because it is secret
  • Has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret

Germany

Trade Secrets do not enjoy the same protection as IP rights. Their legal nature is unclear, and protection is only granted against unlawful acquisition, use or disclosure. Trade secrets are therefore not protected for their content as such, but only against an "unfair" manner of obtaining them.

Hong Kong

Trade secrets and undisclosed commercial information are protected by the common law of confidence. An obligation of confidence will arise whenever the information is communicated to or acquired by a person who knows or ought, as a reasonable person, to know that the other person wishes to keep that information confidential. An industry or trade custom or practice may also impose an obligation of confidence.

Hungary

As a general rule, Act LIV of 2018 on the Protection of Trade Secrets provides protection for the trade secret that is being exchanged during the execution of an agreement, in case the parties fail to agree on such a provision of confidentiality themselves.

Trade secrets include any confidential fact, information and other data, or a compilation thereof, connected to economic activities, which are not publicly known in whole or in the complexity of its elements, or which are not easily accessible to other operators pursuing the same economic activities, where the proprietor of the secret has taken reasonable efforts that may be expected in the given circumstances to keep such information confidential.

India

Protection is provided to trade secrets in the form of formulae, patterns, plans, designs, physical devices, processes and know-how.

Indonesia

The owner of a trade secret is entitled to the exclusive use of the trade secret and may prohibit third parties from using or disclosing the trade secret for commercial purposes. A trade secret is information that is:

  • Unknown to the public
  • Has economic value due to its role in commerce
  • Is kept confidential by the owner

Ireland

The regulation of trade secrets protects commercially valuable undisclosed know-how and business information.

A trade secret is information that:

  • Is secret (in the sense that it is not generally known or readily accessible to persons within circles that deal with such information)
  • Has commercial value because it is secret and
  • Has been subject to reasonable steps by the person lawfully in control of the information to keep it a secret

Confidential information may be protected under and subject to a number of tests in common law.

Israel

Trade secrets are defined as any business information, which is not publicly known and which cannot readily and legally be discovered by the public, the secrecy of which grants its owner an advantage over his or her competitors, provided that its owner takes reasonable steps to protect its confidentiality.

Italy

Trade secrets are defined as corporate information and technical-industrial experiences subject to the legitimate control of the owner provided that said information:

  • Is secret (in the sense that it is not, in its entirety or in the precise configuration and combination of the elements thereof, generally known or easily accessible to those skilled in the arts)
  • Has an economic value due to its confidentiality
  • Is subject to reasonable measures to keep it secret by persons under the lawful control of which they are subject

In addition to the above data relating to experiments or other secret data may also be protected if processing them would entail a considerable work and the disclosure of the data is subject to an authorization for marketing chemical, pharmaceutical or agricultural products with new chemical substances.

The disclosure or unlawful use of trade secrets or confidential information is a breach of the principles of professional correctness.

Japan

Illicit obtainment of trade secrets and use and disclosure of trade secrets for unjustified purposes are regulated under the Unfair Competition Prevention Act (UCPA)(Act No. 47 of 1993).

The UCPA defines trade secrets under a three-prong test:

  • Information is "technical or business information useful for business activities such as manufacturing or marketing methods"
  • Information is "managed as a secret"
  • Information is "not publicly known"

Luxembourg

Trade secrets are not expressly mentioned as a property right under current legislation in Luxembourg.

To respond to the need for harmonization across borders, the Directive (EU) 2016/943 of the European Parliament and of the Council of June 8, 2016 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure brought both a common definition for trade secrets as well as more legal clarity as to the conditions guaranteeing the protection of a trade secret across the European Union.

On August 13, 2018, Luxembourg Parliament has tabled draft bill of law No. 7353 on the protection of undisclosed know-how and commercial information (trade secrets) against unlawful obtaining, use and disclosure, in order to transpose Directive (EU) 2016/943. For the time being, the Luxembourg draft legislation stays very close to the text of the Directive, but it still might undergo some changes during the parliamentary discussions.

At the present time, Luxembourg law does not provide for a uniform definition of trade secrets. Reference should be made to Directive (EU) 2016/943, article 2(1), which defines a "trade secret" as "information which meets all of the following requirements:

  • It is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, 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
  • It has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret"

This definition is close to the definition of Section 39(2) of the TRIPS Agreement:

Reference should also be made to Section 1 (i) of the Commission Regulation (EC) 316/2014 of March 21, 2014 on the application of Article 101(3) of the Treaty on the Functioning of the European Union to categories of technology transfer agreements: "know-how" means a package of practical information, resulting from experience and testing which is:

  • Secret, that is to say, not generally known or easily accessible
  • Substantial, that is to say, significant and useful for the production of the contract products
  • Identified, that is to say, described in a sufficiently comprehensive manner so as to make it possible to verify that it fulfills the criteria of secrecy and substantiality

Mexico

Trade secrets can include the nature, characteristics or purposes of the products; the production methods or processes; or to the means or forms of distribution or commercialization of the products or rendering of services.

Netherlands

Reference is made to the Dutch Trade Secrets Act 2018, which implements the EU trade secrets directive. The Trade Secrets Act defines a Trade Secret as information that is:

  • Secret, this means that it is not generally known among or readily accessible to persons within the circle that normally deal with the kind of information in question
  • Commercially valuable because it is secret
  • Subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret

A trade secret is not necessarily restricted to technical knowledge or information. Commercial information such as marketing strategies, business plans and trade information can also be considered trade secrets. The trade Secrets Act also contains measures and remedies to enforce trade secrets, such as filing for an injunction to prevent further use or disclose of a trade secret. Furthermore, the Trade Secrets Act also provides various remedies against "infringing goods."  

The Trades Secrets Act allows courts to grant the winning party a full cost award of all reasonable and equitable legal costs and other costs, similar to the full cost award in intellectual property right cases.

New Zealand

In New Zealand, trade secrets are a form of confidential information. A trade secret is information that is not generally known within the industry and that has commercial value to a business, such as formulas, recipes or business strategies. Unauthorized disclosure of trade secrets can generally give rise to a claim for breach of confidence. In certain circumstances criminal proceedings may be brought for taking, obtaining or copying trade secrets.

There is no requirement or ability to register trade secrets in New Zealand.

Norway

Trade secrets do not have a statutory definition by law, but often include information about business and operation conditions, first and foremost commercial, technical or operational information, which value is dependent on keeping such information a secret. By case law, the definition of trade secrets generally refers to company specific information, which have importance to the competitive position of the company, and which are subject of precautions to maintain its secrecy.

Poland

A trade secret is understood as technical, technological and organizational information (know-how) of an enterprise, or other information of economic value, which, as a whole or in the precise configuration and assembly of its components, is not generally known to persons who normally deal with the kind of information in question or is not readily accessible to such persons, and provided that the person entitled to use or dispose of the information (eg, licensee) has taken, with due care, steps to maintain its confidentiality. Thus, in order to be regarded as a trade secret, the information should be confidential, not disclosed and protected. The definition of a trade secret, the forms of infringement, as well as the catalogue of available claims were recently modified (amendments in force since September 4, 2018) due to the implementation of the provisions of Directive (EU) 2016/943 of the European Parliament and of the Council into Polish law.  

Portugal

Trade secrets may be defined as information that is secret in the sense that it is not common knowledge or easily accessible for persons in the circles that normally deal with the type of information in question, that has commercial value based on the fact that it is secret, and that has been the object of considerable diligences on the part of the person with legal control over it in order to keeping it secret.

Romania

Legal protection is available for trade secrets holders against unlawfully acquired, used or disclosed trade secret.

Trade secrets are defined as information which (i) is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question, (ii) it has commercial value because it is secret, and (iii) it has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret.

Russia

Trade secrets are defined as any company information of technical, economical, organizational, manufacturing and other nature, which:

  • Is kept secret by its holder
  • Has an economic value due to its secrecy
  • Is subject to commercial secrecy regime

The disclosure or unlawful use of trade secrets is a breach of the rights to commercial secrets.

Saudi Arabia

A commercial secret is defined under the Trade Secrets Regulations as information not known in its final form or where information is not usually easily obtainable by those engaged in this type of business, as well as where the information is of commercial value due to its confidentiality, and where the rightful owner takes reasonable measures to maintain its confidentiality. However, the Trade Secrets Regulations do not protect commercial secrets which are inconsistent with Shari'a, public order and/or public morals.

Obtaining, using or disclosing any commercial secret in a manner that is inconsistent with "honest commercial practices" and without the consent of the rightful owner is deemed an abuse of the commercial secret under the Trade Secrets Regulations.

Singapore

A trade secret is information that is important to a business or company and is not known to the public. A trade secret can include a method or technique that would give a business or company an edge over its competitors.

Not all information will be considered a trade secret. The courts will look at various factors to determine if information constitutes a trade secret, such as if the information was confidential to the business, if the information has been revealed in breach of a promise of confidence and if the information has been used in an improper way that has resulted in financial damage to the business/company.

No registration procedures are required to protect a trade secret.

Slovak Republic

One of the rights belonging to an enterprise involves a trade (business) secret. A business secret comprises all the facts of a commercial, manufacturing and technical nature related to the enterprise that have actual or at least potential value, they are not readily available in the respective business circles, and they are to be kept confidential upon the will of the owner of the business secret; the owner of the business secret shall provide for the adequate protection of the business secret.

South Korea

The UCPA defines "trade secret" to mean information of a technical or managerial nature that can be used in business activities (including production or marketing methods), is generally unknown to the public, possesses independent economic value, and the secrecy of which is maintained through reasonable effort. Under the amendment to the UCPA which will take effect on July 9, 2019, the reasonable effort requirement will be deleted and as long as secrecy is simply maintained, the secrecy requirement will be considered met without reference to the "effort" of maintenance at all.

The UCPA defines infringement of a trade secret to include the following:

  • Acquiring a trade secret through larceny, embezzlement, coercion or other improper methods (ie, an illegal acquisition), or subsequently using or revealing an acquired trade secret (including the revelation of the trade secret to certain people while generally maintaining the confidentiality of the trade secret)
  • Acquiring a trade secret knowing (or being grossly negligent in not knowing) that it was the subject of illegal acquisition, or subsequently using or revealing a trade secret so acquired
  • Using or revealing a trade secret having learned (or being grossly negligent in not learning) subsequent to the acquisition of the trade secret that it was the subject of an illegal acquisition
  • Using or revealing a trade secret in breach of a contractual or other obligation to maintain that trade secret for purposes of acquiring an improper benefit or harming the owner of the trade secret
  • Acquiring a trade secret knowing (or being grossly negligent in not knowing) that the trade secret had been revealed in the manner set out above, or that the trade secret had otherwise been the subject of such revelation, or subsequently using or revealing a trade secret so acquired
  • Using or revealing a trade secret having learned (or being grossly negligent in not learning) subsequent to the acquisition of the trade secret that the trade secret had been revealed in the manner set out above, or that the trade secret had otherwise been the subject of such revelation 

Under the amended UCPA which will become effective on July 9, 2019, courts are authorized to award damages as a punitive measure of up to three times the amount of actual damages for intentional or willful acts of trade secret misappropriation.  

Spain

Trade secrets are protected by restricting any unauthorized use and access thereto, both through civil proceedings under the Unfair Competition Act as well as criminal proceedings under the Criminal Code.

Sweden

The right serves to protect information about business or operating conditions in a trader's business which the trader keeps secret and whose disclosure is likely to cause harm to the trader in terms of competition.

The law applies only to unauthorized attacks on trade secrets.

Switzerland

Trade secrets do not constitute a category of property rights, but are rather protected to a certain extent by unfair competition law, contract law and criminal law.

Taiwan

According to the Trade Secrets Act, a trade secret shall mean any method, technique, process, formula, program, design or other information that may be used in the course of production, sales, or operations, and also meet all of the following requirements:

  • It is not known to persons generally involved in the information of this type
  • It has economic value, actual or potential, due to its secretive nature
  • Its owner has taken reasonable measures to maintain its secrecy

Ukraine

The Ukrainian law provides that a trade secret is information that is secret in the sense that it is not, as a whole or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question, has commercial value because it is secret and has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information to keep it secret.

Certain information which includes, inter alia, the information on charter documents and tax payments shall be not protected as commercial secret in Ukraine by virtue of law.

A trade secret is in the exclusive ownership of the person that classified such information as trade secret.

The owner of the trade secret has the exclusive right to use the trade secret as well as prohibit the third parties from such use.

United Arab Emirates

Article 905 of the Civil Code provides that employees must not disclose industrial or trade secrets of their employer, even after the expiration of their employment contract, in accordance with custom or the timeframe specified in their employment contract.

Under Article 379 of the Penal Code, an employee who is entrusted with a secret by virtue of their trade, position, profession or art and who discloses that secret, or uses that secret for personal gain, is liable and may be ordered to pay penalties (see below).

Article 120 of the Labor Law also allows an employer to dismiss an employee without notice if they reveal any secrets of the establishment in which they have been working.

Article 127 of the Labor Law indirectly protects intangible assets in the form of confidential information (eg, clients and business secrets) by permitting an employer to include a restrictive covenant in the contract of employment. Employees can be subject to a ban on working for a competitor within a specified location, business and period although great care should be taken in drafting to ensure that the terms are reasonable. Such clauses are usually enforced by an action in damages and as such, liquidated damages clauses are often coupled to the restrictive covenant. The Civil Code states that liquidated damages clauses attached to restrictive covenants must not be “exorbitant” and this is usually linked to both the realistic losses but also the ability of the employee to pay any award.

United Kingdom

The status of trade secrets as an item of property is not clear; the more generally accepted view is that trade secrets are not property. However, trade secrets may be protected either through a breach of contract action, where a non-disclosure agreement exists or can be implied, another obligation of confidentiality, or a common law action for breach of confidence.

A common law action for breach of confidence is based on the principle that, for information received in confidence, a person cannot take unfair advantage of that information or prejudice the person giving the information. The same principle applies both in Scotland and in England.

To qualify, information must have the "necessary quality of confidence" and must be "disclosed in circumstances importing an obligation of confidence," eg, imposed by contract, implied by the circumstances of disclosure, or implied due to the relationship between the parties, such as employer/employee. However in employer/employee relationships in particular, there are limits as to how far information can be protected after termination of the relationship (information must be confidential to a sufficiently high degree, with highly confidential trade secrets possibly being protected indefinitely). 

In May 2016, the European Council adopted the EU Trade Secrets Directive, which EU member states (including the UK) were required to implement by May 2018. The Directive was implemented in the UK through the Trade Secrets (Enforcement, etc.) Regulations 2018, although these do not significantly change existing case law.

The Directive defines a trade secret as information that:

  • Is secret (ie, not generally known or readily accessible to persons within circles that deal with such information)
  • Has commercial value as it is secret
  • Has been subjected to reasonable steps by the person in control to keep it a secret

The meaning of "reasonable steps" will be developed as the courts apply this law. Labelling something a trade secret is unlikely to be enough of itself.

The Directive prevents unlawful acquisition, use or disclosure of trade secrets (including unauthorized access). "Unlawful" requires the act to be unauthorized, or contrary to honest commercial practices.

United States

On May 11, 2016 the Federal government enacted the Defend Trade Secret Acts (DTSA). The DTSA provides a federal claim for misappropriation of trade secrets. Until then, trade secrets have been protected only at the state level, with most states (other than New York and Massachusetts) adopting their own version of the Uniform Trade Secrets Act (UTSA).

States adopting the Uniform Trade Secret Act (UTSA) impose liability for improper acquisition of trade secrets; use or disclosure of a trade secret is not required for liability, though additional damages can accrue.

The UTSA defines trade secrets under a two-prong test:

  • "Information, including a formula, pattern, compilation, program, device, method, technique or process, that derives actual or potential economic value from not being known and not being readily ascertainable by proper means by others"
  • Such information is subject to "reasonable efforts by the owner to maintain its secrecy"

The Restatement of Torts (Section 757) defines a trade secret as follows: "a trade secret may consist of any formula, pattern, device or compilation of information which is used in one's business, and which gives him an opportunity to obtain an advantage over competitors who do not know or use it." States adopting the Restatement of Torts approach require unauthorized use or disclosure for liability to accrue.