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.
It is extremely rare for me to sign a CDA, and I can't recall doing so in a professional context. My response is that I am bound by strict rules of confidentiality as a solicitor and that it is not normal practice to sign a separate CDA.
ReplyDeleteI was, however, asked to sign a CDA while on holiday in New Zealand recently. I was visiting a distant cousin who is the manager of the Weta Workshop in Wellington, which has won Oscars for its work in making monsters, clothing, equipment, swords, etc etc for films such as Lord of the Rings. We had a private tour of the workshop and spoke to swordmakers, seamstresses and others. Before being allowed into the workshop, it was their standard practice that I had to sign a CDA "to reassure [Weta's] clients". Amusing really. My eye noticed a tough looking indemnity clause but I couldn't be bothered to read it! I just signed.
There would be no point in a patent agent signing an NDA with his client as the sole purpose of the retainer is to disclose the invention on behalf of the client to the relevant patent office. I suspect that the caution of the inventors is because they are ringing round a number of patent agents and don't want to leave details of the invention with all of them. However, it seems to me a good sign rather than a cause for concern as it means that the inventor is aware of the need to retain secrecy until he has filed his patent application. However, until the inventor can trust his patent agent, there is no proper basis for a working relationship.
ReplyDeleteIncidentally, I wonder how many patent agents advertise that they are members of CIPA. The break code is probably more persuasive
Good point about the NDA Barbara. I may raise that next time I encounter this. And I have informed clients that they are doing the right thing by maintaining secrecy, but that we can't really usefully proceed until they're willing to divulge at least some information about their invention.
DeleteRegarding the advertisement of CIPA membership, I can say that our firm does mention its CIPA membership on a general 'Memberships & Accreditations' page of our website. We've had some clients tell us (now that I've got into the habit of asking them where they first heard of us!) that they found us by searching for 'Bristol' in the Directory of Patent Attorneys maintained on the CIPA website. Although I suppose they would have found us via that regardless of whether or not we advertised our membership.
One of the biggest difficulties for entrepreneurs who are pitching to several separate prospective investors/ clients is divulging enough information for them to be able to understand the idea without giving them enough information to run off with your intellectual property and create the product/ service.
DeleteHi Monica - That's why it's so important for an entrepreneur to be able to mention that they have a patent application already on file. Usually it is also possible for an entrepreneur to make a judgement call as to whether this particular target has the ability to appropriate the idea to itself. I've never known a finance guy that could but if you are talking to a technical expert in the field then only the merest suggestion may be enough for him to have a Eureka moment and see how he could do it too. That's why it's always so hard to sell an idea into a company that is already in the relevant field. They really do not like the chilling effect of an NDA on their freedom
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