Do you have NDAs and confidentiality agreements in place to protect your intangible assets?

3 mins

A common mistake when it comes to protecting a business’s IP is disclosure.  In order to obtain patent protection, for example, your invention needs to be novel and inventive – including over your own earlier disclosures.

The best way to keep your invention confidential is to not disclose it in the first place. However, the commercial reality is that it may be necessary to share your innovative idea to some extent, for example in order to discuss the feasibility of manufacture, to gauge market interest or to attract investors.

However, any incidents of public disclosure can be detrimental to your ability to obtain patent protection in the future, as whatever you disclose – in the UK at least – can be used against your own patent application. Disclosure may include the likes of websites, public presentations or pitches, interviews, and/or discussions.

Many are surprised to learn that even private disclosures can prevent you obtaining a patent application in future if they are not under an obligation of confidence. Whilst in reality private discussions are unlikely to stop a patent from being granted, technically the patent would be invalid. This can cause problems later down the line when encountering IP indemnities or disputes.

Therefore, if you are engaging with external agencies, consultants, investors, or other third parties you should ensure you have a signed written agreement which considers the obligation of confidence in relation to your discussion.

However, even when discussed under a non-disclosure agreement (NDA), information leaks can and do occur, sometimes unintentionally. Taking recordings or keeping detailed minutes of meetings discussed under NDAs can help to maintain accountability for the source of the information leak. This may also be advantageous to prove that someone is illegally exploiting your IP discussed under NDA, or to help to re-establish some rights to obtain patent protection in the event of an unintentional public disclosure.

If some form of public disclosure is necessary, try to speak in vague and general terms and do not reveal exactly how your invention works. It also helps to work with a patent attorney to identify what might be protectable, which in turn can help inform your decision as to what you may or may not be happy sharing.  This can help you determine what you may be happy sharing as part of a pitch for investors, without giving away your potentially patentable ‘secret sauce’ that you may be looking to protect once you have raised investment.

The above is not intended to provide legal advice.  If you wish to seek legal advice on any of these issues, please get in touch with a member of our team.

Written by: Andrew White & Jessie Harrison