Often you may wish to tell other people about your invention, for example if you are trying to license or sell to a third party, to secure investments or to find a manufacturer. These are key steps in developing and commercialising your invention. However, it is essential that you keep any such discussions confidential.
There are several reasons why this is important.
First, if you make your invention public before a patent application or other appropriate registration has been filed, it will no longer be “novel” and you will lose the opportunity to obtain patent protection. (For more information, refer to our pages ‘UK Patents – The Basics’ and ‘European Patents – The Basics’.)
Second, if for any reason your invention does not meet the requirements for registered protection (i.e., the grant of a patent or registered design) or unregistered protection (i.e., copyright, or unregistered design right) the best way to safeguard your invention from copying and exploitation by competitors may then be by protecting it as a trade secret.
Even if you have already filed a patent or registered design application, it is often still sensible to treat any disclosures as confidential. All discussions about your invention should therefore always be made subject to terms of confidence.
Confidential information and trade secrets are protected under the overlapping regimes of the law of confidence and the Trade Secrets (Enforcement, etc.) Regulations 2018 (SI 2018/597) (Trade Secrets Regulations). Both provide for various remedies in the event that your protected information is acquired, shared or otherwise exploited without your permission.
The law of confidence is a broad, common law legal principle. It prohibits the recipient of secret information, given in confidence, from taking unfair and unauthorised advantage of that information to the detriment of this rights-holder. These are the three requirements under the three-limb test set out in Coco v AN Clark (Engineers) Ltd [1968] F.S.R. 415. To successfully establish a claim for breach of confidence therefore, we must be able to demonstrate that the recipient of the information (or even a later third party) made use of the information unfairly i.e., that they knew or ought to have known that the information was confidential when the breach occurred (Vestergaard Frandsen A/S v Bestnet Europe Ltd [2013] UKSC 31).
The Trade Secrets Regulations on the other hand, provide statutory protection for a narrower category of secret information. To fall into this category, the information must be secret but there must also be commercial value in the very fact that it is secret. You must also have made efforts to keep it secret.
The most effective way to ensure that you are protected under these legal frameworks when disclosing any information about your invention is to use a contract that has been drafted to cater for your specific situation. Such an agreement would identify the invention (without disclosing it) and state the steps that the recipient must take to keep the information confidential, and how they may (and may not) use the information. Our legal team is very experienced in preparing appropriate confidentiality and non-disclosure agreements and can tailor these to any set of circumstances, from highly complex, multi-party information exchange arrangements to simple one-off disclosures. However, we appreciate that this may not always be the most economic option. In this page, we have set out a few general practical tips that you can use to try to protect the confidentiality of your invention.
Review any materials and documentation concerning your invention to identify and record in a register, your confidential information or trade secrets. Even without registered protection, are likely to be highly valuable business assets. For many companies in fact, (think Coca-Cola or Google) these secrets are some of their most prized intellectual property assets.
Once you have identified what information you consider to be secret, consider who has access to this information and then limit this on a need-to-know basis.
Ensure that you have suitable electronic and physical security in place to store your confidential information in a secure manner, i.e., using password protection and encryption where appropriate.
Consider your working practices and, if appropriate, put a confidentiality policy in place. This can be a very simple document but as the very least it should set out details of how you handle your confidential information (how is it; identified, stored, accessed, used, shared, monitored and destroyed) and an action plan covering how to respond in the event that protected information is lost or stolen.
If you have decided that you are going to share your confidential information, you must make it clear to the recipient ahead of the disclosure that;
the information is of a confidential nature;
by sharing this with them, the recipient is under a legal obligation to keep the information secret. (The circumstances of the disclosure are such that the recipient has a duty under the law of confidence to maintain the confidentiality of the information);
in the event of any breach of this duty of confidence by the recipient’s unauthorised use of the information which causes a detriment to you, you will have the right to take legal action. (Unauthorised use could include copying, sharing or losing the information or using it for a purpose other than what has been discussed.)
Carefully consider how and in what medium you will share your information and be sure to record this in your information asset register.
Will you disclose it orally in a meeting? If so, either ensure that these details are redacted or not minuted – or that they clearly state that this information is confidential and therefore the minutes themselves are considered a part of your confidential information.
Will you provide written or electronic materials? If written, ensure that the confidential documents are labelled as such. If electronic, apply password protection or appropriate encryption.
This information is simplified and must not be taken as a definitive statement of the law or practice.
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