A recent EPO case revealed that patent filers must take extra care when it comes to confidentiality. Here are our top tips to ensure that inventors meet this requirement in the digital age.
Why are you whispering?
A key requirement for patentability is novelty. For this reason, inventors and organisations who wish to file patent applications like to keep the details of their inventions confidential prior to filing.
The prevalence of email and online document management systems means that maintaining confidentiality is now more difficult than ever. Organisations that frequently collaborate with others during technological development often implement systems which aim to control access to confidential information.
However, a recent European Patent Office (EPO) case has shown that further measures may well be needed.
Can I share documents and maintain confidentiality?
In recent case T2239/15 the EPO considered whether documents which were said to be ‘private’ were also ‘confidential’, in the absence of any agreement to say so.
Two prior art documents were cited in examination proceedings which the applicants claimed were confidential working documents, circulated as part of the MPEG (Motion Picture Expert Group) working group. The applicants submitted that a confidentiality agreement was in place within the working group.
A variety of submissions were filed to support this stance which centred on the secrecy associated with national standards bodies, obligations set out in guidelines for delegates and files which set out that documents resulting from meetings of the working group (known as input documents) were considered ‘private’.
However, the flexible nature of the working group couldn’t support an obligation of confidentiality on the members. Indeed, the documents themselves even indicated that members of the group were encouraged to seek external expertise. It was said that the number of members was indefinite and that no absolute obligation of confidentiality existed.
Therefore, the problem wasn’t sharing documents, but that it couldn’t be guaranteed that all members of that group were covered by an explicit obligation of confidentiality — even if documents shared between the members are accepted as being ‘private’.
The high bar on confidentiality
To prove that a document is confidential, explicit obligations of confidentiality need to be demonstrated in respect of all parties that could legally access the documents.
This is consistent with the current law on novelty, which doesn’t deprive a document of being ‘public’ simply because it has controlled access. However, this decision does clarify that the EPO won’t simply accept assertions that a document is confidential — instead, it will look at the full situation and consider any bar in place to prevent a party from accessing the document, as well as any legal impediment to a party seeing the information contained within the document.
Five tips for confidentiality
Sharing documents which you deem to be confidential is part of the modern innovation process. However, the digital age dictates that information is shared far and wide, making it difficult to control who sees your information.
Here are five recommendations to help maximise your chances of ensuring that a document remains confidential.
Make sure you have an obligation of confidentiality in place for any party who has access to your information. This could be through an employment contract or non-disclosure agreement (NDA). Even a ‘generic’ NDA, which would be relatively cheap to draft, could act as a deterrent to unauthorised disclosure. It would also demonstrate an arguable obligation of confidentiality on the parties that have signed.
Additionally, ensure that the parties signing any agreement have a clear instruction to advise other parties that confidentiality agreements are in place around the information — and that they too must seek such an agreement if they wish to access it.
Make sure documents which are intended to be confidential are clearly marked as such. A marking sends a message to the reader that information contained therein may not be for them, and certainly shouldn’t be passed on. This may seem all too simple and place a large degree of expectation on third parties to notice and obey the marking, but it can help to show your intentions should that document find its way into the wrong hands.
Keep records of all parties that have access to confidential documents. If you suspect that documents have been shared outside of the individuals upon which you’ve imposed an obligation of confidentiality, you must act quickly to protect your position.
If the confidential information relates to, for example, an invention or technical development, you should file a patent application as a matter of urgency before a verifiable publication takes place. Even if the patent application is just a gathering of notes and drawings, it’ll give you a filing date to work from later if you wish to prepare a professionally drafted specification.
The last thing you need is for people to be overly scared of letting confidential information slip through the net. Any delays caused by finger-pointing or a reluctance to own up will only inhibit your chances of effectively protecting your position.
It’s therefore important to encourage and educate parties to be open with you if they make an accidental disclosure. Ultimately, mistakes happen.
Make sure that your employees know about their obligation of confidence. Even though it’s arguably implicit from their employment contract, it’s more effective if they know exactly what is expected of them.