Policies and frameworks to ensure valuable IP is adequately protected before being disclosed externally

7 mins

Developing and launching a new product or service is an incredibly exciting time for a new business. When done in the right way, alongside a strong portfolio of intellectual property (IP), it can also be financially rewarding.

IP can be a valuable asset for businesses, but care must be taken to ensure that IP filings are not weakened by your own disclosures. It is also important to make sure that you are free to operate, and that you have considered your IP portfolio before launching any new products and services. Here are some tips to make sure you don’t lose out at the hands of your own disclosures or your competitors’ IP.

Developing your invention

While you are investigating anything new that you might want to commercialise one day, it is vital that any information about your potential invention is kept confidential. There are numerous ways to achieve this, the simplest being to write clauses into signed agreements such as employment contracts or consultancy agreements. You should at least have a password-protected system for storing any electronic files, maintain secure offices or locked areas for storing physical files, and all confidential documents should be marked as such (e.g. using a header or a watermark).

If you are planning to approach investors about your invention, it can often strengthen your position to have IP filings pending at the time and will allow you to speak freely about your invention. However, if you are looking for funds to pursue your IP filings, or to fully develop an invention before filing, you will need to exercise great caution in deciding how much you can disclose. Where possible, you should make it clear in writing that you are approaching them under strict confidence and keep evidence of this, although it is not uncommon that investors are unwilling to accept such confidentiality terms.

There are legal remedies available for patents in the UK and Europe if you can prove that someone has stolen your invention while under an obligation of confidence. However, to be eligible to rely on such solutions, evidence is required to show that all appropriate measures to keep information confidential during the research and development process were implemented, especially before an IP application has been filed.

Sharing your invention

Since IP systems across the world vary in how they view disclosures by inventors or applicants, there is often some confusion about what can be published or presented, by whom, when, and where.

You may have been told that there is a grace period available, meaning an invention can be published or presented without prejudicing patent rights. While this might be true in some jurisdictions (including the US and Japan), this is not the case globally. The UK and Europe do not recognise a grace period, except in very limited circumstances, including when a disclosure is made in breach of confidence, as mentioned above.

In fact, most jurisdictions operate under worldwide novelty, meaning that a disclosure covered by the grace period in the US will still stop you from getting a patent granted in the UK or Europe. It is always safest to make sure you file all IP applications before sharing any inventions publicly.

Freedom to operate

There are a vast number of patents in force, and it can seem daunting trying to establish whether you run the risk of infringing one or more of them. This is an area where an experienced IP attorney can provide invaluable support to your business.

Performing freedom to operate (FTO) searches aims to establish whether a product or service could be considered to infringe an already existing IP right belonging to a competitor. This can also help establish whether you have any rights (such as prior user rights), whether you can work around the active IP, whether you might be able to clear your path by taking down any invalid IP in force, or who you might want to approach to discuss potential licensing agreements. Obtaining an FTO search before launching a new product or service is a valuable investment and a necessary preparatory step. Consulting an attorney will offer you comprehensive advice as well as save you time and money in the long-term.

What should you do?

It is vital that your business has a system in place to capture your IP before it gets disclosed externally. There are a number of ways you can achieve this, and your preferred method will depend on the size of your business as well as the time and resources you or your colleagues have available.

Many companies and organisations use simple invention disclosure forms for this purpose. A template form would be made readily available to anyone working in research and development (R&D), to be completed once they have developed something new and exciting. The form should contain a brief background, one or two lines describing what the invention is (i.e. the difference over the background disclosures), and a sentence describing what the advantages of the invention are – these need not be lengthy or detailed at this stage.

Researchers should be encouraged to complete a form like this before submitting any manuscripts to journals, or any abstracts for presentation at conferences. Afterwards, you can discuss the potential value of that development, including whether you want to pursue a patent filing, and when, where, and how you want to disclose it.

A number of companies also have policies in place which mean that researchers and employees cannot make an external disclosure without approval. This helps ensure that nothing is disclosed in a way which would prejudice your IP. If there is a planned disclosure coming up, it may be worth approaching a patent attorney to place an application on file the day before and it would be useful to send them the form described above to help with drafting an application. A robust policy on sharing developments in the R&D stage allows you and your IP attorney to structure your IP portfolio to align with your business goals.

Written by: Jessica Eastwood