How to Keep Patentable Inventions Confidential: Contracts, Publication Clauses and Provisional Applications – Trade Secrets

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Whether you choose to file for a patent or keep a new invention secret, it’s crucial to take steps to minimize the risk 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 by business secrecy (business secrecy). In both cases, it is crucial to protect the invention by limiting the possibilities of disclosure, including by imposing contractual obligations of confidentiality. If this is not sufficient, a date must be fixed as soon as possible, if necessary by means of a provisional request.

1. Confidentiality to protect novelty

Trade secrets are an obvious option when it comes to keeping patentable inventions confidential. However, when the owners of an invention wish to protect it by means of business secrecy, they must be vigilant in their relations 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 grant of a patent is subject to several conditions, including that of novelty.

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

For this reason, it is essential to ensure the discretion of anyone with knowledge of the work on the invention, whether a partner, employee or subcontractor. Before any disclosure of information or know-how, this discretion should be ensured by drafting a confidentiality contract or by inserting a confidentiality clause in the contract binding the parties (employment contract, partnership contract, subcontract -contracting).

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

In the same way, considering confidentiality at this stage also helps to avoid falling into the trap of self-disclosure. This is important because it is not just about protecting against disclosures by third parties, but also against disclosures made by oneself, inadvertently or not.

2. Use publication clauses to control disclosures

Time limits may also need to be considered when determining how to maintain the confidentiality of patentable inventions, as inventors often wish to publish their research or results and it may be necessary to authorize a partner to publish scientific papers on technical advances. and knowledge developed. This dissemination of new knowledge is one of the pillars of the progress of science and confers a reputation on its author.

In the event that a partner or subcontractor wishes or must publish an article on the invention, it will be necessary to include a publication clause in the contracts. This clause must specify the limits and conditions of any communication relating to the invention. Depending on the needs of the parties, this must include a time limit (prevent publication for a certain time, for example to allow the filing of the patent application) or a condition of prior approval of any publication by the owner of the invention.

3. Safeguarding Novelty with Provisional Patent Applications

In the event that the preceding measures have not been taken or have been insufficient and disclosure is imminent, the novelty of an invention may still be protected by filing a provisional patent application in the competent courts.

For example, in France, the PACTE law, which entered into force on July 1, 2020, established a provisional patent application system directly inspired by American provisional applications. This procedure makes it possible to date and establish a right of priority by filing a simple technical description of the invention with the National Institute of Intellectual Property (INPI). As it is not necessary to communicate the claims in their entirety (these documents can be filed later), this makes it possible to file a provisional patent very quickly.

This application is also cheaper and much faster, although it should be noted that a provisional application does not establish intellectual property title as such. On the contrary, it must be transformed into a genuine patent application or utility certificate within 12 months of filing, otherwise the application will be deemed withdrawn.

Nevertheless, such an option makes it possible to anticipate an imminent disclosure and thus limits the risk of loss of rights by lack of novelty. However, it should only be used sparingly, when there is not enough time to write a full application. Indeed, the technical description of the invention, the only condition for filing a provisional application, may not be sufficient to validly establish the priority of the subsequent application, in particular in the absence of claims. In this case, as the disclosure has already taken place, the novelty will be lacking and the final application will be rejected.

The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.

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