Many companies find themselves having certain assets that they cannot protect as registered intellectual property and in those situations, their protection as trade secrets (secretos industriales) is the correct answer.
Under the Federal Law for the Protection of Industrial Property, a trade secrets is
"Any information of industrial or commercial application kept confidential by the entity exercising legal control, which means the obtaining or maintaining of a competitive or economic advantage over third parties in the conduct of economic activities and in respect of which he has adopted sufficient means or systems to preserve its confidentiality and restricted access thereto"
The definition is broad enough to encompass different types of business assets such as know-how, information and data, lists, recipes, algorithms, methods, etc. A nice update in the recent Federal Law for the Protection of Industrial Property, as opposed to the previous Federal Industrial Property Law, is the deletion of certain characteristics that necessarily referred to the products or services which was a limitation of the scope of protection. Therefore, the scope is most likely never an issue; however, the requirements set forth by the law to maintain the protection are sometimes missed by companies.
Companies sometimes miss to maintain adequate levels of compliance with the most basic requirements, "exercising legal control over the contents" and "maintaining the contents secret". The first on these requirements is fairly new, since the Federal Law for the Protection of Industrial Property imported such term from the USMCA; while we celebrate the alignment, this new concept has not been clearly defined by our laws. Nonetheless, we understand it to mean that the contents of the trade secrets need to have been obtained lawfully and that the holder of the contents in the trade secrets make the decisions on how the contents are used and/or disclosed.
Therefore, the word "control" in this requirement, is very important and intertwined with the second requirement which is maintaining the contents secret. In this regard, while the Federal Law for the Protection of Industrial Property does not provide guidance on the types of security that needs to be involved in protecting a trade secret, companies need to maintain sufficient means or systems to preserve the confidentiality and restricted access, which include everything from the most basic actions such as the use of locks, keyed cabinets, doors and other physical restrictions, to more complex mechanisms like passwords, biometrics or encryption. Since there is no magic recipe for implementing the correct security measures, the means or systems would likely depend on the nature of the contents in the trade secret.
Companies and individuals need to assert which security measures are necessary, so that in the event of a lawsuit they may provide sufficient conviction element to convince a Court that they have implemented the means or systems available at the time and sufficient considering the nature of the contents in the trade secret. It would then be recommendable to document the decision making with related with the selection of a particular mean or system, in order to produce such evidence.
In addition, it is well received that the Federal Law for the Protection of Industrial Property, as opposed to the previous Federal Industrial Property Law, increased the list of individuals who are legally required to maintain the confidentiality of a trade secret, including administrative authorities, the parties to a dispute, their representatives or those authorized to hear and receive notifications; judicial or administrative officials; witnesses, experts or any other person intervening in a judicial or administrative proceeding, related to a trade secret, or having access to documents that are part of such proceeding, as well as, any person who, by reason of his work, employment, position, office, position, profession or business relationship, has access to a trade secret. It is recommendable that whenever a trade secret is shared with an administrative authority to formally prevent the recipient that the contents include industrial secrets. While administrative officials can adopt security measures ex officio, it is desirable to prevent them of the nature of the information and the security measures that should be taken.
Finally, failure to adopt and maintain for the life of the secret, these requirements would result in forfeiting the protection granted by the law. However, if these requirements are met, then individuals or entities that may infringe a trade secret would not only be liable for damages under civil law, but the Federal Law for the Protection of Industrial Property has increased liability from damages only to include administrative and criminal penalties too.