Silence Is Golden

Editors note: This article appeared in Inventors World magazine as one of our hugely popular 'Patent Place' articles - especially written for us.

Without wishing to heighten paranioa, in what is already a paranoid business, the following advice is of crucial importance to all inventors...

Roland Whaite, Assistant Director, Marketing Services, The Patent Office

Related further reading...

Further Reading:

It has cropped up somewhere in every edition of Inventors World; it is the top of the list at the UK Patent Office for error and misunderstanding by applicants; it is a subject which lies uncomfortably with award schemes however responsible the organising body; and every new generation of inventors have to learn about it from scratch.

It is the subject of premature disclosure, and this bane of the inventor centres on the concept of novelty whilst bringing in the related questions of what constitutes confidential information as opposed to what is regarded as being made public.

The principle is simple - in order to get a patent or a registered design, the invention or the industrial design must be new. With few exceptions, if the inventor or designer makes it public at any time before submitting an application, then it is not new anymore.

However, the ramifications are complex, and the pitfalls, particularly for the lone inventor, are legion.

Danger Areas

The moments of danger are many and varied, but the following are typical:

• Relatives and friends

• Colleagues

• Representatives of other companies

• Business advisers and consultants

• Market surveys

• Inventors competitions and award schemes

• Exhibitions and lectures

• Invention promotion companies

• Media-type invitations to 'Tell us your invention'

• Approaches to companies when trying to sell an idea

• Corporate and academic bodies

It is probably fair to say that our larger companies are becoming more aware of the problems of premature disclosure, and universities are realising that the traditional academic disciplines which encourage publication should be tempered by commercial considerations which at least give the option of applying for a patent first.

However, the tendency of companies to use contract staff or consultants, and indeed to sub-contract many operations to outside bodies, is itself creating new problems. An in-house discussion between employees of a single company would not normally be regarded as public; once any sort of outsider is brought in, then the position may well be muddied, with no automatic assumption of confidentiality.

The legal position

Whilst the language of the law is sometimes obscure, the Patents Act in this area is pretty unambiguous. The novelty requirement includes the following passage:

"...all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in the United Kingdom or elsewhere) by written or oral description, by use or in any other way".

What has emerged from a number of precedent cases is that for something to have entered the public domain and thus not to be new anymore, then numbers do not come into it; if just one person has been given the information and there has been no fetter placed upon that person, then the information has been made public.

If the information has just been potentially available but has been publicly accessible, then the information has got into the public domain whether or not anyone can be found who has actually gained the information. If something has been put on the market and it can be taken apart to find out how it works and the details could thus have been revealed, then the invention has been made public.

Just as seriously, if a machine is displayed or operated where it can be seen by a member of the public, such as at an exhibition, on the highway, or in a factory where persons not bound to secrecy are admitted, then all information that a reasonably skilled person might be able to glean would again be regarded as public.

There is also the possibly uncomfortable thought that the more successful an invention turns out to be, the more others will want to undermine it. A classic approach with a lucrative patent is for competitors to try and get it revoked by showing that it should never have been granted in the first place, and they can be extremely keen to uncover premature public disclosure or use, perhaps many years after the event.

Just ask the Windsurfer Corporation, whose UK patent was brought down by evidence that a 14-year old boy had sailed his own device off Hayling Island some years before the company had applied for their patent, and in this case a family snapshot proved the 'public accessibility' to this information.

Confidentiality

For an exchange of information to be regarded as confidential, and thus not entering the public arena, there must normally be an understanding which both parties accept before the information is imparted.

Whilst this understanding can be just oral, it is obviously easier to prove subsequently if there is a written undertaking signed by both parties, so the wise course is always to get such a contract.

In certain cases, the circumstances surrounding a discussion or exchange are such that the law would accept that confidentiality is implicit. Typically, this would be where an inventor visits a qualified legal adviser, such as a patent agent or solicitor, or where he has a formal meeting with a government official.

Where the grey areas start to intrude, and the law always has grey areas, is where there might be a reasonable inference from the circumstances that the discussions are commercially in confidence.

An example might be a discussion between the inventor and a business adviser, such as the Innovation and Technology Counsellor at a Business Link, but this has not been tested by the Courts yet; or where, to quote one of the precedents, 'Information of commercial or industrial value is given on a business-like basis and with some avowed common object in mind like a joint venture'. The judge in this case took a narrow view of what constituted ~a joint venture, so it would be unwise to hope that the above quote will give solace in every business situation.

Talking to companies

Just sending your ideas in an envelope marked 'confidential' to a company does not impose any obligation of confidentiality on that company; for the material to be treated as confidential, the company must have agreed in advance.

If an inventor and a potential manufacturer get together, the law might take the view that their discussions were confidential up to a point, but what if either party have to involve anyone else to market the products or to make essential components? The obligation of confidentiality may well end in the absence of definite written commitments. The message here remains unchanged - if at all possible get a written confidentiality agreement.

Of course, as has been mentioned previously in the pages of Inventors World, there are many companies who refuse to sign such a blanket agreement. There is understandable reluctance, particularly where a company has its own research and development teams, since the company would not want to sign for something which their own personnel may already be working on.

Companies such as this often insist that a patent application is already filed since that will at least remove the uncertainty over when and what has been contributed by the inventor.

Remember also that the law is going to be reluctant to accept that confidentiality exists where it is going to be difficult to control. In theory, a lecturer could get his academic audience to each sign an individual non-disclosure agreement; once the numbers get above a small handful, a judge could well take the view that the disclosure was public on the basis that so many agreements could not realistically be policed, and indeed that there was no commercial need-to-know on the part of the audience.

There can even be a problem within a company; if the details of an invention are given to an employee within the company who has no real need to know this information, then again there could be doubt whether the invention has truly been kept confidential without an express undertaking by the employee to keep it secret.

Inventors competitions and award schemes

It is the sign of a well run competition or award scheme that it emphasises, right from the start and before any submissions are elicited, that potential entrants are alerted to the danger of submitting technical matter or design features without first considering whether they might need to file for patent or design protection.

Really reputable organisations recommend obtaining professional advice, e.g. from a patent agent.

Certainly, whatever implicit confidentiality which could exist at the moment the entry is received as a consequence of the rules of the competition would soon be dissipated by the process of judging which often employs outside consultants and absolutely by any display of the products, assuming the invention can be ascertained thereby.

As a footnote to the judging aspect, it is always a surprise to the Patent Office how many competitions, including those run by other Government departments, seem happy to award ingenuity and inventiveness without a patent search to see whether the ideas have been proposed before.

Media Invitations and Invention Promotion Companies

Since the whole point of such media invitations is to encourage inventors to talk about their inventions, any cloak of confidentiality is again likely to be viewed by the law as short¬lived if it exists at all.

The same problem occurs with invention promotion companies; since the primary purpose of the promotion company is to advertise the invention eventually, even if operating as a co¬operative venture, there is probably little implicit confidentiality in the initial negotiations.

Exhibitions

As mentioned previously, exhibiting is normally the death knell for a subsequent patent application if the details of the invention are thereby apparent.

Registered Designs

There are a number of differences in the UK between the Patents and the Registered Designs Acts.

For example, whereas the former demands absolute novelty for a patented invention, for a design to be registered it needs only to be new in the UK. It is possible for an American designer to show his designs in the USA before filing an application in the UK.

There is also a section in the Registered Designs Act which spells out what can be regarded as confidential. Thus, the communication of a design to a Government department, to consider the merits of a design, is not regarded as a public disclosure.

There are also a limited range of exhibitions where you can display first and file a registered design application later, but the designer only has six-months and the exhibition must be licensed under the Registered Designs Act.

Here again, it should be remembered that a registered design will not protect any technical or functional features; only the outward appearance, shape or ornamentation will be so protected.

Differences in the USA

They order things very differently in the USA, and it is not just that they operate a 'first to invent' system, whereas practically every other country in the world relies on a 'first to file' system. Clearly, it is much easier for Patent Offices to determine the date of an invention when it depends on the act of lodging a formal application; proceedings in the US Patent Office can be lengthy when two competing applicants are trying to establish from their laboratory notebooks and diaries who really was the first to come up with a particular improvement.

But, additionally in the USA, the inventor has a one-year 'grace period' in which the invention can be tried out and used or sold commercially before the decision has to be made whether to file a patent or design application with all the associated expenses.

This idea of a grace period is sufficiently attractive to other countries that there was considerable pressure on the GATT negotiators to recommend the inclusion of a grace period, perhaps of only six months, in the associated proposals for world-wide harmonisation of patent law.

The package involved the USA switching over to the 'first to file' system and discussion has become stalled with the Americans reluctant to give up their 'first to invent" requirement.

Of course, this does not make everything plain sailing for the American inventor, particularly if his markets could lie outside the USA. The US grace period will not help in the UK or Europe, for example, so if the details of the invention have been made public in the US before an application is filed anywhere, then a UK or European patent will not be available.

It is not just the lone inventor in the US who can fail to realise the problems of venturing abroad; relatively large US companies and universities regularly fall foul of this situation.

Summary

Without wishing to completely stifle commercial discussions, there would seem to be several bits of advice which apply almost regardless of circumstance:

Only tell those who have a need to know
Get their agreement to keep the information confidential in advance -whether or not you intend to file a patent or design application, you want to keep your options open; and even if you do file an application, there may still be advantage in keeping the details confidential until the applications are published by the Patent Office.
Keep essential inventive details back. It might be appropriate to explain what something achieves, e.g. for a market survey, without stating how it is done. In those circumstances you might be able to prevent the invention becoming public until a later date.