How To Keep Patentable Inventions Confidential: Contracts, Publication Clauses And Provisional Applications

• Published date: 11 November 2022
• Subject Matter: Intellectual Property, Patent, Trade Secrets
• Law Firm: Novagraaf Group
• Author: Ms Rose-Marie Ehanno

Whether you choose to file a patent application or keep a new invention secret, it's crucial to take steps to minimise the risks of disclosure. Rose-Marie Ehanno explains how to keep patentable inventions confidential.

An invention can be protected in two ways by its owner: either by filing a patent application or through business secrecy (trade secrets). In both cases, it is crucial to protect the invention by limiting the possibilities of disclosure, including imposing contractual obligations of confidentiality. If this is not enough, a date must be set as soon as possible, if necessary by means of a provisional application.

1. Confidentiality to protect novelty

Trade secrets are one clear option when considering how to keep patentable inventions confidential. However, when owners of an invention wish to protect it by means of business secrecy, they must be vigilant in their dealings with any person, third party or partner. They must do the same if they plan to protect inventions by filing a patent application. Indeed, the granting of a patent is subject to several conditions, including that of novelty.

The condition of novelty requires that the invention claimed in the patent be new, which is to say never disclosed to a third party without the obligation of confidentiality. This means a patent does not necessarily have to be filed immediately to protect an invention that can be developed in-house and in secret. Conversely, as soon as technical details need to be disclosed - for example to a supplier, subcontractor, customer or even to the public to test their interest - it is essential to decide whether to file a patent, as any disclosure made before the patent application was filed deprives the invention of its patentability.

For this reason, it is essential to ensure the discretion of any person who has knowledge of the work on the invention, whether it be a partner, an employee or a subcontractor. Before any disclosure of information or know-how, it is necessary to ensure this discretion by drafting a confidentiality contract or by inserting a confidentiality clause in the contract binding the parties (employment contract, partnership contract, subcontracting contract).

Great care must be taken in drafting this requirement, and in particular, the extent of the confidentiality must be clearly and unequivocally defined, so as to avoid any doubt as to its scope. This ensures contractual liability for the disclosure of confidential information to be...