Every company seeks competitive advantage over its commercial adversaries to position itself in the market. Such advantages that companies may have over their competitors can be obtained in different ways and it is there where we will have to analyze the type of legal protection to which we will have to have access.
Under Mexican law, there are two types of protection that are relevant to this case: the patent and the industrial secret. It is important to note that none of these figures is better than the other. The most important thing will be to notice which is the most adequate figure to protect our competitive advantage.
In the case of the patent, one of the aspects that we will have to consider will be that its validity is only twenty years and these are non-extendable. On the other hand, the industrial secret has an undefined duration.
On this occasion, we will discuss the figure of the trade secret in companies and their regulation in our country.
What can a trade secret consist of?
Trade secrets are defined as any information of an industrial and/or commercial nature kept by a person exercising legal control as confidential. Such information must confer and/or maintain a competitive advantage.
Basically, such information may be contained in any document, electronic medium, or medium that can contain such information.
It is important to mention that the information must not be in the public domain nor must it be legally required to be disclosed by law or judicial decision.
But what happens if we have to share confidential information in order to carry out legal procedures of our companies?
This is a common concern that we should not be afraid of, since the law allows us to exclude such situations as an exception. Sharing such information will not be considered misappropriation.
Misappropriation is defined by the Federal Law for the Protection of Industrial Property as:
“acquisition, use or disclosure of a trade secret in a manner contrary to good uses and customs in industry, commerce, and services involving unfair competition, including the acquisition, use, or disclosure of a trade secret by a third party who knew, or had reasonable grounds to know, that the trade secret was acquired in a manner contrary to such uses and customs.”
Likewise, it is important to clarify that if any person independently manages to obtain such information through its creation or discovery, it will not be considered misappropriation.
Similarly, if such information is acquired in a legitimate manner lacking confidentiality or the knowledge of being a trade secret, we will not be incurred in a legal offense. An example of the above could be when sensitive information is shared with investors in a project for accountability purposes, but they are not warned of its confidential nature.
Who can share a trade secret?
Trade secrets can be shared by the person who has legal control over them to a third party, who in turn has a legal obligation not to share such information. This is why it is of vital importance to establish industrial law protection clauses in our contracts and agreements that share sensitive information.
Who is obliged to keep and not disclose trade secrets?
As already mentioned, such information may be shared with third parties who must keep it confidential. It should be clarified that specifically those persons who, due to their employment, job, position, commercial or labor operation know such secret must refrain from sharing it if they have been warned of its confidential nature.
It is for this reason that it is relevant to warn that such persons will be held legally responsible if such information ends up accessing the public domain or unauthorized third parties.
We have already clarified the repercussions of sharing a trade secret in the case of company regulatory procedures. But it is also necessary to clarify that if any authority orders an individual to disclose such information; this same authority will be responsible for materializing the appropriate legal tools to ensure the protection of such sensitive information on an informal basis or if required by the individual. Such authorities include, in accordance with the law, the following:
“representatives or authorized to hear and receive notifications; judicial or administrative officials; witnesses, experts or any other person intervening in a judicial or administrative process, related to a trade secret, or having access to documents that are part of such process.”
In Vega, Guerrero y Asociados we believe that industrial property matters are essential in any company; therefore, the advice regarding industrial secrecy is a powerful tool that we offer within our legal services as a means that can allow you to shield the competitive advantage of your company.
