In a recent decision, the Supreme Court ruled that an invention by a patent attorney in the same technical field as a company to which he had provided advice did not constitute unlawful use of confidential information. The parties were Mirrx Therapeutics, a Danish biotech company, and Roche Innovation Center Copenhagen, formerly Santaris Pharma.

Facts

A former researcher and inventor within the field of RNA (ribonucleic acid) biology was employed with a patent agency. During his employment, he assisted Roche in updating certain micro-RNA patent applications (Antimir applications), but also filed his own patent application (a Blockmir application).

Arguments

Roche claimed that the patent attorney had access to and gained knowledge of its confidential information during his employment with Roche's patent agent and that he used this confidential information unlawfully to prepare the patent applications for the Blockmir technology. Further, Roche argued that the Blockmir invention competed with its Antimir invention. Therefore, Roche claimed that it was entitled to an exclusive licence to the Blockmir technology.

The patent attorney disputed that he had used confidential information to prepare the patent application. He claimed that the Blockmir technology was an entirely different invention than Roche's and that it was based on his year-long experience in RNA biology.

Decision

Based on extensive reports from court-appointed scientific experts, the Supreme Court ruled that the patent attorney's invention was an "entirely different invention" than Roche's and that therefore the patent attorney had not used confidential information to prepare his own patent applications.(1)

As a result, all of Roche's claims were dismissed.

Comment

The decision indicates that – as long as confidential information is not misused – patent attorneys are not automatically (eg, pursuant to ethical rules or codes of conduct) prohibited from filing their own patent applications during employment at IP consultancies, even if the inventions are in the same technical area as the inventions of the consultancy's client.

The decision further illustrates the complexity of trade secret cases.

The Supreme Court's judgment cannot be appealed.

For further information on this topic please contact Jeppe Brinck-Jensen or Kamilla Kelm Demant at Accura Advokatpartnerselskab by telephone (?+45 3945 2800) or email (jeppe.brinck-jensen@accura.dk or kamilla.kelm.demant@accura.dk). The Accura Advokatpartnerselskab website can be accessed at www.accura.eu.

Endnote

(1) For further details of the judgment (in Danish) please see domstol.fe1.tangora.com/media/-300016/files/188-2013.pdf.

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