Trade secrets are considered an object of property, allowing for their transfer and licensing, under a similar regime to that of patents, which already provides for the transfer of know-how. Likewise, it establishes the regime for cases of co-ownership of trade secrets; that agreed between the parties would prevail in these cases, should this fail the corresponding provision of the Act would apply or, otherwise, the provisions regarding common property of the Civil Code. Once again, the legal regime is similar to that for patents.

Finally, this section of the Act would make the party transferring secrets it does not own liable for the damages caused to the acquiring party, provided that the former acted in bad faith.

With regard to the actions in defence of trade secrets, this right is placed on an equal foot with the rest of intellectual property rights, once again in line with the catalogue of actions allowed for patents, such as cessation, removal and compensation. The diminished liability of the bona fide third party, referred to above, becomes a reality here as the substitution of these actions for the payment of a monetary compensation is allowed in some cases. In addition, the Act provides for the exercise of precautionary measures and measures of enquiry to supplement the defence actions, following the procedures set out both in the Patent Act and the Civil Procedure Act.

One of the most significant developments included is the demand for confidentiality regarding trade secrets in legal proceedings, therefore avoiding placing this valuable information at risk by establishing preservation measures and penalties for their infringement.

The new Act is an opportunity for all companies, opening up the possibility to protect as trade secrets information that previously lacked clear protection. It is precisely for this reason that it becomes necessary to implement a trade secret protection plan to achieve the protection afforded by the Act. Otherwise, trade secret owners would not be in a position to bring all the actions this new Act makes available to them. Similarly, companies must be particularly diligent with the information they receive and use whenever this is considered secret since, as stated above, they could be liable for infringements, even when acting as third parties in good faith.

  The first part of this article is available here

Authors: Javier Fernández-Lasquetty , Cristina Espín and Martín Bello

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