By: Robert A. Fleming- Business Attorney Puerto Rico
Puerto Rico has a new statute to regulate the use and protection of industrial or trade secrets. Known as the “Industrial and Trade Secret Protection Act of Puerto Rico.” Act No. 80 of June 3, 2011, follows the model law of the Uniform Trade Secrets Act (UTSA).
Industrial or trade secret is a form of unfair competition and includes any confidential information with trade or industrial value, which its owner reasonably protects to prevent its disclosure. Often, these secrets can be very valuable and become an integral part of a company’s competitive position. To qualify for protection the information must not be generally known. Also, the holder of the secret must show that reasonable precautions were taken to prevent disclosure and that the information was misappropriated.
In certain cases, trade secrets may be lawful obtained using independent discovery, reverse engineering, and when there is inadvertent disclosure resulting from the trade secret holder’s failure to take reasonable protective measures.
BE IT ENACTED BY THE LEGISLATIVE ASSEMBLY OF PUERTO RICO:
This Act shall be known as the “Industrial and Trade Secret Protection Act of Puerto Rico.”
For purposes of this Act, the following terms shall have the meaning provided for below:
(a) Information.—Knowledge that broadens or clarifies knowledge already garnered. It includes, but is not limited to, any formula, compilation, method, technique, process, recipe, design, treatment, model or pattern.
(b) Improper Means.—Unlawful means not allowed under the law or which is contrary to free competition and to laws and regulations in effect, whereby a trade secret is obtained, including, but not limited to, misappropriation, theft, bribery, malfeasance, deceit, breach of contractual duties, wiretapping, or espionage through electronic or other means.
(c) Person.—Any natural or juridical person.
Section 3.—Trade Secret.—
Industrial or trade secrets are deemed to be any information:
(a) That has a present or a potential independent financial value or that provides a business advantage, insofar as such information is not common knowledge or readily accessible through proper means by persons who could make a monetary profit from the use or disclosure of such information; and
(b) For which reasonable security measures have been taken, as circumstances dictate, to maintain its confidentiality.
Any information generated by, used in or resulting from any failed attempts to develop a trade secret shall also be deemed to be a part thereof.
Section 4.—Reasonable Security Measures.—
Reasonable security measures are any preventive measures that should be taken in order to limit access to information under specific circumstances. These shall be determined pursuant to any foreseeable conduct whereby the trade secret could be accessed and the nature of the risk ensuing from such conduct, as well as the cost-benefit ratio between the security measure and the trade secret.
Measures that can be deemed to be reasonable to maintain the confidentiality of the trade secret include, but are not limited to:
(a) The nondisclosure of information to individual or entities not authorized to access such information;
(b) Limiting the number of persons authorized to access such information;
(c) Requiring company employees authorized to access such information to sign confidentiality agreements;
(d) Keeping such information in a place separate from any other information; (e) Labeling such information as confidential;
(f) Taking measures to impede the indiscriminate reproduction of such information;
(g) Establishing control measures for the use of or access to such information by company employees; or
(h) Implementing any technologically available measures when publishing or transmitting such information over the Internet, including the use of email, web pages, message boards, and any other equivalent medium.
Section 6.—Grounds for Action.—
Any natural or juridical person who misappropriates a trade secret shall be held accountable for any damages caused to its owner.
For purposes of this Act, misappropriation shall be:
(a) The acquisition of a trade secret belonging to another by a person who knew or should have known that he/she acquired such secret directly or indirectly through improper means; or
(b) The disclosure or use of a trade secret belonging to another without his/her express or implicit consent, by a person who:
(i) Used improper means to gain knowledge of the trade secret; or
(ii) At the time of disclosure or use, such person knew or should have known that such trade secret was:
(1) Obtained through a person who acquired such information through the use of improper means;
(2) Obtained under circumstances from which a duty to maintain confidentiality or to limit use ensues;
(3) Obtained through a person who had the duty-bound to the trade secret’s owner to maintain confidentiality or limit use; or
(4) Known by accident or by mistake.
Section 7.—Special Proceedings.—
When in the judgment of the corresponding Court, in a lawsuit supported by a sworn statement filed by the owner of a trade secret, specific facts are alleged which clearly establish that the defendant misappropriated such trade secret, that the disclosure or use thereof by the defendant shall cause damages to the plaintiff, and that it is highly likely that the plaintiff shall prevail, the Court shall issue a provisional ex parte order to require the defendant to immediately stop, cease or desist, under warning of contempt, from the use and disclosure of the trade secret which prompted such lawsuit, until a hearing is held within ten (10) days following the date the provisional order is issued.
The provisional order shall provide for a hearing to be held within ten (10) days following the date such order is issued, in order for the defendant to show grounds for which a preliminary injunction should not be issued so as to allow for the elucidation of the rights of the parties involved. The order thus issued shall be rendered ineffective, inefficient, and invalid and shall not be enforceable after such ten (10)-day term has transpired. Such term may only be extended if the Court finds that extraordinary circumstances exist before the expiration of the term for the previous order.
Section 8.—Remedies; Injunction.—
In all cases in which it is proven that an industrial or trade secret has been misappropriated, the Court may issue a preliminary injunction order, for which the plaintiff shall not be under the obligation to prove irreparable damages. Furthermore, the Court may issue a permanent injunction once the case has been fully heard.
The Court, by request of the defendant, shall terminate the injunction if such industrial or trade secret has ceased to exist as a secret. The Court may extend the injunction for an additional reasonable term so as to prevent the defendant from obtaining an improper business advantage, or if the defendant is culpable when such secret ceases to exist.
The Court may, under extraordinary circumstances, order that reasonable royalties be paid if it finds that prohibiting the future use of an industrial or trade secret would be an unreasonable measure. The term provided for paying such royalties shall not exceed the term during which the use of the industrial or trade secret was prohibited. Finding that a party is using the trade secret before being aware or in a position that allowed him/her to be aware of the concept of misappropriation shall be deemed to be an extraordinary circumstance, thus rendering the injunction non-equitable.
Section 9.—Remedies; Damages.—
Except in cases in which there has been a change in position or situation, before the defendant was aware or should have been aware of the concept of misappropriation concerning the information of the industrial or trade secret, and this renders a monetary settlement non-equitable, the plaintiff may recover any material damages sustained because of such misappropriation. The plaintiff may also claim any additional damages caused by any advantage obtained by the defendant as a result of such misappropriation which have not been included in the computation of losses caused by such damages. If unable to prove, to the satisfaction of the Court, material damages or damages caused by improper advantage, the Court may order the payment of royalties for a term that shall not be longer than the term for which the use of such information would have been prohibited.
The Court, in its discretion, may fix the sum total for damages in an amount that shall not exceed thrice (3) the proven damages when the Court finds that the violation was intentional and perpetrated in bad faith.
The elements to be considered when granting damages for misappropriation of an industrial or trade secret include, but are not limited to:
(a) Loss of profit for the owner of such information;
(b) Value of the sum that would have been paid to a consultant to develop such information;
(c) Depreciation of such information’s value as a result of disclosure;
(d) Developing costs in the process of acquiring such information; or
(e) Such information’s market value.
Section 10.—Attorney’s Fees.—
In addition to the circumstances provided for in the Rules of Civil Procedure in effect, the Court shall impose on the claimant, in its ruling, a reasonable sum on account of attorney’s fees if the evidence presented proves that such misappropriation by the defendant was intentional and perpetrated in bad faith.
Section 11.—Conservation of Secret.—
(a) In any action filed whereby misappropriation of an industrial or trade secret is alleged under this Act, the plaintiff, before discovery of proof, shall describe the trade secret as specifically as possible, but without disclosing the same.
(b) In any action filed under this Act, the Court shall keep the confidentiality of the alleged industrial or trade secret and take measures as it believes to be necessary, which may include, among others, the issue of a protective order that ensures confidentiality, holding closed hearings, keeping the records of such action sealed, and ordering any person involved in the lawsuit not to disclose the industrial or trade secret without the previous authorization of the Court.
(c) Before ordering the discovery of information classified by its owner as an industrial or trade secret, the Court shall determine whether the party that requests the discovery is in substantial need of such information. For purposes of this Act, a “substantial need” shall be deemed to exist if the following circumstances are present:
(i) The allegations presented with the purpose of establishing the existence or absence of liability, have been presented in a specific manner;
(ii) The information for which discovery is sought is directly relevant to the allegations presented in a specific manner;
(iii) The nature of the information for which discovery is sought is such that the party seeking its discovery would sustain substantial damages if access to such information is not allowed; and
(iv) There is the belief, in good faith, that the testimony or evidence generated by such information that is a part of the trade secret shall be admissible at trial.
(d) The Court shall not order direct access to databases that contain information that is a part of a trade secret, unless the Court finds that the party proposing the discovery is unable to obtain such information through any other means and that such information is not privileged.
(e) By request of the owner of an industrial or trade secret, the Court may make the discovery of such industrial or trade secret contingent upon the posting of an appropriate bond.
(f) Any industrial or trade secret discovered under this Act may only be disclosed to the persons identified in the order issued by the Court, and may only be used or disclosed within the court proceedings in which its discovery is authorized.
(g) Any person who receives information that is a part of an industrial or trade secret under this Act shall be subject to the jurisdiction of the courts of the Commonwealth of Puerto Rico.
(h) When an industrial or trade secret is discussed or disclosed at trial or in a hearing, the Court shall order the removal from the courtroom of any persons whose presence is not indispensable to continue court proceedings, and the owner shall be allowed to obtain confidentiality agreements individually signed by all persons present at the courtroom or who are party to any proceeding in which the trade secret is discussed, presented or otherwise disclosed if such persons have not previously executed a confidentiality agreement with the owner of such industrial or trade secret.
(i) Any information that is a part of an industrial or trade secret, and any copy, duplicate, document or any other means that reflects or contains such trade secret information or any portions or excerpts thereof shall be returned to the owner of such trade secret upon conclusion of lawsuit proceedings, or destroyed to the owner’s satisfaction.
Except for the provisions in this Section, this Act preempts any law of the Government of Puerto Rico that provides for civil remedies for misappropriation of a trade secret.
This Act does not affect:
(a) Contractual remedies, whether or not based on the misappropriation of a trade secret;
(b) Other civil remedies not based on the misappropriation of a trade secret;
(c) Criminal actions, whether or not based on the misappropriation of a trade secret.
Any action or proceedings to enforce any provision of this Act shall be instituted no later than three (3) years following the date the person affected became or should have been aware of the occurrence of the facts that constitute grounds for an action.
Section 14.—Severability Clause.—
If any clause, paragraph, section, subsection or part of this Act is found to be unconstitutional by a competent Court, the ruling thus pronounced shall not affect, impair or invalidate the remainder thereof. The effect of such ruling shall be limited to the clause, paragraph, section, subsection or part of this Act thus ruled unconstitutional
This Act shall take effect immediately after its approval.