NEW SPANISH ACT ON TRADE SECRETS

by | Feb 25, 2019 | Jurisdiction

On February 20, 2019, Act 1/2019 on Trade Secrets was published. This Act transposes into Spanish law, with a certain delay, Directive 2016/943, of June 8, 2016, on the protection of trade secrets. The Act has 25 articles and modifies the system of protection of trade secrets, up to now regulated in Article 13 of the Unfair Competition Law.

The Act that has been approved recently reinforces the protection of trade secrets. On the one hand, it provides legal certainty in the Spanish legislation regarding the legal definition of what constitutes trade secrets as well as what is not. In its second chapter, a definition is given to what constitutes illicit acts of obtaining, using and disclosing secret acts and therefore constitute an infringement of trade secrets and what not.

Likewise, the Act establishes a bundle of legal actions for the defence of trade secrets (chapter four) and jurisdiction and procedural rules (chapter five). In this section it is of high interesting to find rules to protect trade secrets by means of procedural restrictions on the access to information contained in procedures unknown until now in our law: limitation on access to information to certain persons in the court proceedings, the restriction of the use of information or the omission in the decisions that are published of those parts that have been declared confidential.

The third chapter of the new Act does not make reference  to dispositions contained in the Directive and fills a gap in the Spanish law as it contemplates some rules applicable to ownership and trade secrets transfer. The transmission of rights, co-ownership and licenses are thus regulated, completing a regulation that was already initiated with the Spanish Patent Act of 2015, where in article 18.3 it was set for the industrial secrets generated in the scope of an employment or service relationship the same legal regime applicable to inventions.

 

It is perhaps missing an extension of the rules regarding the protection of trade secrets in any judicial proceedings in which it may be necessary to grant such protection. In this sense, the Act is incomplete, although it can be understood that by direct application of the Directive, judges will be authorised to apply the rules contemplated in the Trade Secrets Act to any type of court proceedings and not only those that are affected by the application of the substantive norms of that specific legislation. It is a pity however that the legislator has not taken advantage of this opportunity to give certainty to the legal traffic and to rule uniformly on trade secrets within the context of judicial procedures.

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