Confidentiality and disclosure of ideas
Confidentiality plays a critical part in the ownership, development and commercialisation of ideas.
Most ideas or improvements arise out of colleagues discussing problems and identifying potential solutions. When such discussions take place between staff within a single organisation there is a common obligation of implied confidentiality and this is OK. However, in order to maintain some control over the amount of information imparted it is wise to limit the extent of the disclosure and when potential solutions are under discussion to label any documentation as confidential.
If you develop an idea or concept which may have commercial potential there are a few simple guidelines to follow which will help maximise the chances of being able to protect and profit from the idea:
Get IP protection early
An idea should be assessed as early as possible in its development to determine whether there is likely to be protectable IP and whether there is likely to be a market for it. Medipex’s skilled team can help you with this process and advise on the most appropriate way of protecting an idea (an expensive patent application is not always possible or necessary) so you should contact Medipex as soon as possible.
Keep your idea secret
Keep your idea a secret and resist pressure to announce, disclose or publish details of the idea to any party outside your organisation until you have spoken with Medipex and the best way forward in protecting an idea has been determined. Once the idea has been assessed and protected in the most appropriate way, the results can be published – it may only be a short delay.
You should not disclose your idea either orally or in writing, nor give away, donate or sell samples. Public disclosure (other than under explicit terms of a confidentiality agreement) will invalidate any subsequent patent application and severely diminish both potential commercial value and benefits accruing to your organisation and the originator. Disclosure without entering into an undertaking of confidentiality may also prejudice negotiations of commercial arrangements with a company.
Why is keeping an idea secret important?
To gain certain Intellectual Property 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 with other parties.
What is meant by ‘disclosure’?
The following are examples of disclosure:
- formal/informal discussions with staff who are not employed by the same organisation
- talks at meetings where people from external organisations are present
- placing information about an idea on websites (including social media sites such as Linkedin, Facebook and Twitter)
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 IPR will have been wasted.
Disclosure to other NHS 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 NHS organisation 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.
Disclosure to with non-NHS staff
All discussions with persons not employed by your employer 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 people present from outside your organisation. In this case it should be ensured that any external people sign a confidentiality agreement 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 external people 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, and we would be pleased to offer further guidance.
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 Confidentiality Agreement 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.
What is a Confidentiality Agreement
A Confidentiality Agreement enables a conversation to be held between two or more parties in confidence. This means that anything that is deemed to be confidential information is, in the eyes of the law, kept confidential (so remaining protectable) and more importantly means that one Party cannot use or disclose information disclosed to them during a conversation covered by such an Agreement. The use of such Agreements is common, but you should contact Medipex if you require a confidentiality agreement or before signing one provided to you by another Party so as to ensure that your rights are protected.
Ensure you have spoken to Medipex before involving any external parties in a project
As a general rule do not involve external organisations or companies in testing or prototyping without a written agreement together with confidentiality agreement being in place. More information about working with external parties can be found on the “Collaboration” page of our website.