Italy jurisdiction report: Trade secrets meet reverse engineering
Article 3.1(b) of the directive states that the acquisition of a trade secret shall be considered lawful when the trade secret is obtained by reverse engineering a product that is lawfully in the possession of the acquirer, unless the reverse engineering is restricted through a contract.
This is consistent with the 16th “whereas” of the directive (in the first part, each paragraph begins, ‘whereas’), which states that “reverse engineering of a lawfully acquired product should be considered as a lawful means of acquiring information, except when otherwise contractually agreed”.
However, it is noted that the language of article 3.1(b) of the directive has not been included in law N. 63/2018, and that a decision of the Court of Bologna (January 5, 2015, R.G. 21945/2013) observes that information accessibility has relative character, whereby the abstract possibility to carry out a reverse engineering does not suffice to exclude trade secret protection.
To be lawful, reverse engineering should be “easy” to those skilled in the art, in consideration to the characteristics of the market, wherein time and costs involved in the reverse engineering should be taken into account.
In this regard, it is observed that the relative character of the accessibility of the information to be protected reflects also in article 2.1(c) of the directive and in article 39.2(c) of the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement, which state that trade secret protection further requires that the owner of the information takes reasonable steps, under the circumstances, to keep the information secret.
