Disclosure and confidential information

Author: Alex Frost, Chartered and European Patent Attorney

This month Alex Frost considers aspects of disclosure and confidence that affect 'when' a patent application should be filed.

To recap: for an invention to be patentable, it must be new. As a result, a patent application should generally be filed for an invention before any disclosure of the invention is made. However, this does not mean that you are prevented from making any disclosure of the idea! The basic premise is that, in Europe at least, any disclosures you make will not prejudice the subsequent filing of a patent application, provided that those disclosures are confidential. The United States is different, because US law provides a 12 month grace period so that you can validly file even after you have disclosed an idea, but generally it is better not to rely on this unless you have to.

Keeping secrets
There are various ways in which confidentiality may be imposed or implied. For example, anyone under a contract of employment will be considered to be under a duty not to disclose any ideas arising from their employment without permission. Outside contractors would also ordinarily be under such an obligation but it is important to check the wording of a contract carefully. Such contracts can be a minefield as they also need to address ownership of IP (the subject of a future column) and many are less than explicit about this.

Therefore when holding discussions with outside suppliers (for example, third party prototype manufacturers) it is imperative that any discussions are under a duty of confidence until a patent application is filed. Rather than being in the position of trying to persuade a judge that there was an implied (verbal) duty of confidence, it is advisable to try to ensure that a non disclosure agreement is in place before you even start discussions.

There is no particular form for such a document, but your solicitor or patent attorney should be able to provide a suitable agreement. Best of all, get a patent application on file. Although there are some pitfalls, it is possible to file a basic application relatively quickly if need be, because there is a 12 month period after filing during which you can beef up the text of the application and still claim the original filing date.

©2005. Boult Wade Tennant

This article appeared in Vol.21 No. 12 (December 2005) of Components in Electronics.

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