Via occasional guest IPKat-blogger
Sean Gilday (Page Hargrave) comes the following piece, drawn from his own personal experience in what we unkindly call the Real World. Readers may have experienced the same phenomenon, or a variation of it. This is what Sean writes:
Tell Me Your Invention!
Although we’re only just over one month into 2015, I have already twice encountered a problem that rarely seemed to arise during 2014. I’m not sure what to put this down to. Perhaps it’s a consequence of inventors in general becoming more aware of intellectual property? Or maybe it’s simply a blip? The problem I’m referring to is a reticence on behalf of some inventors to tell me what their invention is.
The recent glut of potential clientele with this issue is concerning. Do I not sound trustworthy over the phone? Does my headshot on the firm's website make me look a little shifty? I must admit, it’s starting to give me a complex ...
The first time this came up I was slightly at a loss, and it’s quite a reasonable stance to take if you think about it: horror stories abound where inventors have shot themselves in the foot and prematurely disclosed their invention to a friend down the pub or carelessly left a document on a train (this isn’t just some imagined contrivance for P2 exams!). Therefore, if it’s prudent to keep the invention secret, why does that exclude me? I thought it might be a good idea simply to enumerate the reasons in blog-post form, so that in future I might simply direct potential clients here to put their minds at ease.
First and foremost, s.2(4) of the Patents Act states that disclosures resulting from a breach of confidence, occurring in the six months before filing of a patent application, shall be disregarded for the consideration of novelty. This applies to anyone to whom the invention is disclosed by the inventor provided there is a duty of confidence imposed. I would think it to be fairly inarguable that contacting a patent attorney at work with a view to filing an application imposes a duty of confidence on that attorney. If you’re still concerned about any ambiguity here, I’d recommend that you simply include a footer on all correspondence that states that the information therein is indeed to be treated as confidential.
Secondly, s.280 of the Copyright, Designs and Patents Act states that any communication pertaining to the protection of any invention is privileged from disclosure, and to be treated as if the attorney (or firm) were acting as the client’s solicitor. This point is usually not persuasive to those people who are merely making initial contact for an enquiry, and who may not go on to be an actual client, but I still feel that it is worth listing here.
Thirdly, if an attorney is a member of Chartered Institute of Patent Attorneys (and this information can usually be found on a firm’s website), they have agreed to abide by its Charter and Bye-Laws. CIPA maintains disciplinary powers over any members not maintaining a professional practice.
Fourthly, since 2010, the patent attorney profession has been regulated by IPReg. This has its own Code of Conduct which can be viewed online. Rule 5 of the Code of Conduct relates to integrity, and states that a regulated person must “put clients’ interests foremost and keep clients’ affairs confidential”. Rule 8 relates to confidentiality, and states that a regulated person must “keep the affairs of clients and former clients confidential”.
And finally, there is the matter of practicality. If you do not trust a person sufficiently to keep your invention secret, it follows that you clearly do not trust them enough to draft an application on your behalf, and so the process is stymied. Even if drafting were somehow to proceed in this case, the holding back of information relating to the invention (for example, improvements and modifications) due to a lack of trust is highly likely to be detrimental to the application.
As a closing point, some prospective clients have suggested that they bring with them a non-disclosure agreement (NDA). While I’ve always said that I’d be happy to sign one (after reading it thoroughly of course), effective NDAs must be properly written and correctly set out the information not to be disclosed, and this can be tricky to do depending on the nature of the invention. Still, even a properly drafted NDA would probably give me some concerns over the matter of trust in that attorney-client relationship, and is a slight case of overkill given the points outlined above.
So, to any future inventor that I may have directed to this post: I hope that this puts your mind somewhat at ease.
Readers might like to add their own comments, whether in relation to the UK or from further afield.
