INTELLECTUAL PROPERTY

Protecting your inventions: careful who you tell

In the world of innovation, protecting your intellectual property is vital. We regularly advise clients on safeguarding their inventions and one of the most crucial pieces of advice we give is: keep your inventions secret.

The importance of confidentiality

Confidentiality is of paramount importance when it comes to seeking patent protection for your new invention. Many inventors are proud of their creations and naturally want to tell others – whether it’s to seek investment, find manufacturing partners, or simply to showcase their innovation. However, disclosing your invention to the public can jeopardise your chances of obtaining patent protection. If an invention is disclosed publicly, it can strip away the essential requirement of novelty needed for patent protection.

How easy is it to disclose to the public?

It’s important to understand how easy it is to inadvertently disclose your invention to the public. Let’s look at a notable example involving Ocado and AutoStore, two companies known for their advanced robotic systems used in warehouses.

AutoStore secured patents for their robotic systems and later entered a legal battle with Ocado, alleging patent infringement. Ocado, however, was able to prove that AutoStore’s patents were invalid because AutoStore had disclosed details of the invention to the public before applying for patent protection.

The disclosure was not through a public announcement or written publication. Instead, AutoStore shared details with a potential customer and their agent via emails and a presentation during negotiations. Despite being in a commercial context, these interactions were deemed not confidential due to the specific circumstances. This disclosure was enough to invalidate AutoStore’s patents.

Lessons to be learned

The key takeaway is to be extremely cautious about who you disclose your invention to and under what circumstances. Here are three important things to take into consideration to help protect your intellectual property:

  1. Use Non-Disclosure Agreements (NDAs): Always ensure that any party you share details of your invention with signs an NDA. This legally binds them to confidentiality and helps protect your invention in several ways.
  2. Be mindful of context: Even in commercial negotiations, ensure that confidentiality is explicitly agreed upon. Don’t assume that a business context automatically guarantees secrecy.
  3. Prepare thoroughly: Before disclosing any details, consider the legal implications and consult with an IP lawyer to ensure all necessary protections are in place.

Protecting your invention often starts with understanding the importance of confidentiality. If you need to discuss your invention for commercial reasons, ensure all parties are bound by NDAs. This precaution significantly enhances your chances of securing patent protection in the future.

 

For more information about, or assistance with, intellectual property protection, please contact Robert Ganpatsingh on +44 (0)1273 744213 or via robert.ganpatsingh@dmhstallard.com.

About the authors


about the author img

Robert Ganpatsingh

Partner

Expert in contentious matters involving design rights, patents, copyright, trade marks and Passing Off.

Stay connected, sign up for updates

Stay connected

Recent articles

Insights

Directors’ liability in intellectual property disputes

Directors of companies can be held personally liable for the infringing activities of the companies they operate

17/05/2024

Media spotlight

DMH Stallard noted as one of the best firms for championing women

legalbusiness.co.uk writes about the number of female professionals ranked in leading legal directory Legal500, with DMH Stallard holding 14 rankings across 20+ departments in the latest edition.

11/03/2024

Media spotlight

Cyber attack at JD Sports

Jonathan Compton comments for Evening Standard on the potential fines JD Sports can expect following a data breach

Jonathan Compton

30/01/2023

Videos

Act now to protect your business assets – part one, your people

We look at how you can maximise business protection provisions in your staff documentation and what steps you should take if your commercial advantage is compromised

19/01/2023