Disclosure Guidelines
1. Why do we need these guidelines?
To gain certain IP rights, namely patents and registered designs, the IP must be new and, with regard to patents, not part of what is called the 'state of the art', or 'prior art'. The Patents Act 1977 defines this as “the state of the art in the case of an invention shall be taken to comprise all matter….which has at any time….been made available to the public (whether in the United Kingdom or elsewhere) by written or oral description, by use or in any other way”.
If IP is disclosed in an unprotected way then it will be deemed to have been made available to the public. In this case the opportunity of acquiring a registered design or patent has been lost. The purpose of these guidelines is to help NHS staff minimise any detrimental effect on IP protection when discussing their ideas and inventions.
2. What is disclosure?
The following are examples of disclosure
- formal/informal discussions with non-PCT/Trust staff
- talks at meetings where non-PCT/Trust staff are present
- posters
- publications
- placing information on websites
3. How will anyone know?
The Patent Offices carry out very thorough searches for any such references before they grant a patent. Companies, who also carry out their own searches, can use prior disclosure as a ground to revoke a patent that has been granted. Therefore it is highly likely that even an informal disclosure will come to light at some stage with the result that substantial financial investment in protecting the IP will have been wasted.
4. Talks and discussions with PCT/Trust staff
Discussions between NHS staff can be very valuable and necessary for the progression of ideas. Between employees of the same organisation there is recognition of an implied obligation of confidentiality. Therefore within each PCT/Trust all NHS staff are covered by this implied obligation of confidentiality. Notwithstanding this obligation, it is nevertheless advisable, in order to maintain control of the flow of information and minimise any leakage, to limit the number of staff you talk to about your idea, label all appropriate documents as confidential,ensure they are dated and restrict their circulation to a minimum.
5. Talks and discussions with non-PCT/Trust staff
All discussions with persons not employed by the PCT/Trust should be covered by a Confidentiality Agreement (CA)/Non Disclosure Agreement (NDA). The classic example when a document like this is required is when you need to discuss your work with a company and the work is not patented or published, or the patent application is still within its first priority year. It is important to appreciate that seminars/lectures that are not “internal only” may well have non-PCT/Trust staff present. In this case it should be ensured that any non-PCT/Trust staff signs a CA before the presentation commences. It should also be stated at the outset that the information is disclosed in confidence in order to ensure that all attendees are put on notice that the information they are receiving is confidential. As in section 3 we would advise that confidential information is divulged to staff in this way only if absolutely necessary and that the number of attendees is kept to a minimum.
Clearly, if the information that is being disclosed is ONLY information that has been already been disclosed in the literature or described in a patent application and hence already in the public domain then a CA is not required. In this situation it is important to resist the temptation to divulge over and above what is already publicly available. CA/NDAs can be supplied by Medipex on request, who will also be pleased to offer further guidance.
6. Publishing
The processes of publishing papers and patenting are not mutually exclusive. The key issue here is one of timing. The publication (including any advance abstract publication) should not appear in a Journal or on the web until after appropriate steps (which may include filing of a patent application), have been taken to secure the protection of any commercial aspect(s). Therefore the earlier that potentially commercial IP is recognised and protected the shorter the delay to publish.
In the case of a PhD thesis it is advisable that the external examiner signs a CA before starting review of the thesis. A patent application should be filed before the thesis is made publicly available in the library of the host institution.