Q: I have a brilliant idea.  I cannot explain it here as everyone would realise how good it is and copy it.  However I have been told by my patent attorney that it is not an industrial invention and so cannot be patented.  How can I protect it?

 

A: This is one of the most common questions in practice.  If it is not patentable such as a means of doing business or a new game or similar such idea then as soon as it is no longer confidential, such as when it is first sold, then it cannot be protected.  Others may copy it.  All you can do is get in first on the market.  The courts will not enforce confidentiality for something which is in the public domain.

 

You can stop those whom you approach with the idea from copying it where they sign a confidentiality agreement of course.  You can also protect elements of the product.  For example, if you come up with a good name for it you can stop others copying the name by registering a trade mark.  If it has an interesting aesthetic design when made as a prototype product you can register the appearance as a registered design.  If parts of it are a copyright work, like the Scrabble game board, or there are drawings on its surface or packaging or long specifications you can stop by copyright (which does not require any registration) someone copying those elements.  However if they do not copy but just use the idea there is little you can do.

Inventors Legal Problems

Related further reading by Susan Singleton...

Further Reading:

Editors Note: These articles first appeared as Susan Singleton's very popular column in Inventors World magazine.

 

Due to the changing nature of the law, Susan has fully updated them for 2015.

Part #12

For more Inventors' Legal Problems go to:

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www.singlelaw.com

Q: My partner and I are developing an invention which we have shown to a company under protection of a secrecy agreement.  This company is showing a lot of interest.  My partner is a civilian and I am currently a serving member of the armed forces.  Recently I read an article where the MoD has rights on patents by active servicemen.  As no application has yet been made for a patent where do we stand on this issue and is it likely that the MOD would be able to take this invention from me and my partner?  Would it be wise to register the patent in my partner's name?

 

A: You do not say if your invention were made in the course of your employment.  If it were then it will belong to your employer whether or not you work for the MoD or any other employer.  If this is the case then even if you apply in your partner's name the MoD could bring proceedings under s8 of the Patents Act 1977 to have the patent transferred to their name.  The provisions under the 1977 Act of "course of employment" etc, are a little more complicated than that but the gist is that if you are employed to make an invention or given a special task to devise an invention it will be the employer's.  The Patents Act 1977 does not let an employer take all inventions an employee produces (particularly those unrelated to your job).  S42 of the 1977 Act protects against this and any clause in a contract stating otherwise is void.  The section also applies to contracts with Crown employees of which you may be one  see s42(4)).  However, you may need to take advice or call the UK Intellectual Property Office on whether you are covered by any special legislation in this field and you need to scrutinise your employment contract carefully.  You must not, through your patent application or other exploitation for example, breach the Official Secrets Act if you are subject to its provisions.  Nor must you breach any provision in your contract which stops you being involved in any other business whilst still an employee.  There are special provisions in the 1977 Act giving the Crown rights to use inventions of other people's patents which can include for defence purposes but those are not relevant to ownership of the patent in the first place.

Q: My employer is ripping off some of its potential licensees.  Last week he told an inventor he was not interested and then went ahead and copied the idea.  He said the inventor would never sue him for breach of the confidentiality agreement.  What should I do?

 

A: The Public Interest Disclosure Act 1998  protects employees who "blow the whistle" on employers who are breaking legal rules.  So you could report this man and in theory your job is safe.  If he sacks you could claim unfair dismissal. The Act  principally applies to breaches of law whereas his is probably just a civil suit between inventor and the company for breach of contract/confidentiality.  You may instead choose to find another job first and then report him.  Be very careful because if you are wrong you may be held to have breached your duty of fidelity to your employer.