How to keep patentable inventions confidential: Contracts, publication clauses and provisional applications
Whether you choose to file a patent application or keep a new invention secret, it’s crucial to take steps to minimise the risks of disclosure. Rose-Marie Ehanno explains how to keep patentable inventions confidential.
An invention can be protected in two ways by its owner: either by filing a patent application or through business secrecy (trade secrets). In both cases, it is crucial to protect the invention by limiting the possibilities of disclosure, including imposing contractual obligations of confidentiality. If this is not enough, a date must be set as soon as possible, if necessary by means of a provisional application.
1. Confidentiality to protect novelty
Trade secrets are one clear option when considering how to keep patentable inventions confidential. However, when owners of an invention wish to protect it by means of business secrecy, they must be vigilant in their dealings with any person, third party or partner. They must do the same if they plan to protect inventions by filing a patent application. Indeed, the granting of a patent is subject to several conditions, including that of novelty.
The condition of novelty requires that the invention claimed in the patent be new, which is to say never disclosed to a third party without the obligation of confidentiality. This means a patent does not necessarily have to be filed immediately to protect an invention that can be developed in-house and in secret. Conversely, as soon as technical details need to be disclosed – for example to a supplier, subcontractor, customer or even to the public to test their interest – it is essential to decide whether to file a patent, as any disclosure made before the patent application was filed deprives the invention of its patentability.
For this reason, it is essential to ensure the discretion of any person who has knowledge of the work on the invention, whether it be a partner, an employee or a subcontractor. Before any disclosure of information or know-how, it is necessary to ensure this discretion by drafting a confidentiality contract or by inserting a confidentiality clause in the contract binding the parties (employment contract, partnership contract, subcontracting contract).
Great care must be taken in drafting this requirement, and in particular, the extent of the confidentiality must be clearly and unequivocally defined, so as to avoid any doubt as to its scope. This ensures contractual liability for the disclosure of confidential information to be triggered in the event of a dispute.
In the same way, considering confidentiality at this stage also makes it possible to avoid falling into the trap of self-disclosure. This is important as it’s not only a question of protecting oneself against disclosures by third parties, but also against disclosures made by oneself, inadvertently or otherwise.
2. Using publication clauses to control disclosures
Time limits may also need to be factored in when considering how to keep patentable inventions confidential, as it is often the case that inventors wish to publish their research or results and it may be necessary to allow a partner to publish scientific articles on the technical advances and knowledge developed. This dissemination of new knowledge is one of the pillars of the progress of science and confers a reputation on its author.
In the event that a partner or subcontractor wishes or needs to publish an article on the invention, it will be necessary to include a publication clause in contracts. This clause must specify the limits and conditions for any communication relating to the invention. Depending on the needs of the parties, this should include a time limit (preventing publication for a certain period of time, e.g. to allow the filing of the patent application) or a condition of prior approval of any publication by the owner of the invention.
3. Safeguarding novelty with provisional patent applications
In the event that the previous measures have not been taken or have been insufficient, and a disclosure is in the offing, the novelty of an invention may still be protected by filing a provisional patent application in relevant jurisdictions.
For example, in France, the PACTE law which came into force on 1 July 2020, introduced a provisional patent application system that was directly inspired by American provisional applications. This procedure makes it possible to date and establish a right of priority by filing a simple technical description of the invention with France’s National Institute of Industrial Property (Institut National de la Propriété Intellectuelle or INPI). As it is not necessary to communicate the claims in full (those documents can be submitted later), it makes it possible to file a provisional patent very quickly.
This application is also less expensive and much faster, although it should be noted that a provisional application does not establish an IP title as such. Rather, it must be transformed into a genuine patent application or utility certificate within 12 months of filing, otherwise the application will be deemed to be withdrawn.
Nonetheless, such an option does make it possible to anticipate an imminent disclosure and thus limits the risk of loss of rights due to lack of novelty. However, it should only be used sparingly, when there is not enough time to draft a complete application. Indeed, the technical description of the invention, which is the only condition for filing a provisional application, may not be sufficient to validly establish the priority of the subsequent application, particularly in the absence of claims. In this case, as disclosure has already taken place, novelty will be lacking and the final application will be rejected.
For advice on how to keep patentable inventions confidential, including drafting contracts or filing provisional patent applications, speak to your Novagraaf attorney or contact us.
Rose-Marie Ehanno is Manager of the Contracts and Legal Recordal Department of Novagraaf Patents in France